Exhibit 10.1
AGREEMENT BETWEEN
ENZYMEBIOSYSTEMS, INC.
and
NORTHEASTERN OHIO UNIVERSITIES COLLEGE OF MEDICINE
This agreement is executed by and between EnzymeBioSystems, Inc., having an
address of 16773 W Park Drive, Chagrin Falls, Ohio 44023 ("Company"), and
Northeastern Ohio Universities College of Medicine d/b/a Northeastern Ohio
Universities Colleges of Medicine and Pharmacy, having an address at 4209
State Route 44, Rootstown, Ohio 44272 ("University"), both or either of which
may hereinafter be referred to respectively as the "Parties" or a "Party."
WHEREAS, Company and University share an interest in cancer research; and
WHEREAS, University possesses the professional proficiency requisite to
perform a portion of the work in determining in vitro and in vivo anticancer
activity of Company compounds.
NOW, THEREFORE, it is agreed as follows:
PROGRAMMATIC CONSIDERATIONS
ARTICLE 1. KEY PERSONNEL
The key personnel representing University shall be Anupam Bishayee, Ph.D. In
the event a change in key personnel is necessary, Company will be notified
within thirty (30) days after University reasonably knows the change is
necessary. Any individual appointed to replace that person must have the
written approval of Company prior to appointment.
ARTICLE 2. SCOPE OF WORK
University shall accomplish the tasks set forth in Attachment A. University
shall supply the necessary personnel, equipment, and materials to accomplish
its tasks set forth in its Scope of Work. Any change in the Scope of Work
requires the express written approval of Company. All work performed under
this Agreement is subject to acceptance by Company or its authorized
representative.
ARTICLE 3. PERIOD OF PERFORMANCE
The effective period of this Agreement shall be from July 1, 2010 through
December 31, 2011 unless otherwise provided for by modification of this
Agreement.
ARTICLE 4. LIMITATION OF COSTS
The total cost of performing the task under Article 2 of this Agreement will
not exceed $130,022 (one hundred thirty thousand twenty-two dollars). Funds
shall be spent in accordance with the budget attached hereto as Attachment B;
however, funds may be re-budgeted as appropriate in order to accomplish the
Scope of Work. Company shall not, in the absence of a modification hereto,
be obligated to reimburse University for costs which are in excess of the
total amount specified in this Article.
If, at any time, University has reason to believe that the cost of the work
will exceed the amount set forth in this Article, University will notify
Company in writing, giving a revised budget for completion of the work.
Company will not be obligated to reimburse University for any cost in excess
of the amount set forth in this Article and University will not be obligated
to continue the work or incur costs in excess of that amount unless and until
this Agreement is amended to increase the maximum amount.
ARTICLE 5. METHOD OF PAYMENT
University shall be paid by Company for services rendered in accordance with
the terms of this Agreement, not more often than monthly, for allowable
costs, contingent upon Company's receipt of a properly prepared invoice from
University. All invoices shall be submitted using University's standard
invoice, but at a minimum shall include current and cumulative costs;
numerical sequence of the invoice; and certification as to truth and accuracy
of invoice.
Each invoice must be signed by an authorized financial official, and be
sent to:
EnzymeBioSystems
16773 W Park Drive
Chagrin Falls, Ohio, 44023
Attention: Anushavan Yeranosyan
Phone: (440) 708-0012
Each payment shall be made via check to University and should be mailed to:
Susan To
Grants Accountant
Northeastern Ohio Universities Colleges of Medicine and Pharmacy
4209 State Route 44
Rootstown, Ohio 44272
Phone: 330.325.6380
Email: sto@neoucom.edu
A final statement of cumulative costs incurred, including cost sharing,
marked "FINAL," must be submitted to Company's Financial Contact by March 30,
2012. The final statement of costs shall constitute University's final
financial report.
University shall be responsible for federal, state and local taxes, and
Company shall not be held liable for any federal, state or local taxes in
relation to these payments.
ARTICLE 6. REPORTING REQUIREMENTS
University will provide a final technical report to Company within 90
(ninety) days of the termination of this Agreement.
ARTICLE 7. NOTICE
Any notice or report required or permitted to be given under this Agreement
shall be deemed to have been sufficiently given for all purposes if delivered
to the following addresses of the Parties:
FOR Company
Administrative:
EnzymeBioSystems
16773 W Park Drive
Chagrin Falls, Ohio, 44023
Attention: Anushavan Yeranosyan
Phone: (440) 708-0012
FOR University
Administrative:
Elizabeth Whippo Cline
Director, Office of Research and Sponsored Programs
Northeastern Ohio Universities Colleges of Medicine and Pharmacy
4209 State Route 44, PO Box 95
Rootstown, Ohio 44272
Phone: 330.325.6498
Fax: 330.325.5926
Email: ecline@neoucom.edu
with copy to:
Office of the General Counsel (same address)
Technical Direction:
Anupam Bishayee, Ph.D.
Northeastern Ohio Universities Colleges of Medicine and Pharmacy
4209 State Route 44, PO Box 95
Rootstown, Ohio 44272
Phone: 330.325.6449
Email: absihayee@neoucom.edu
ARTICLE 8. CONFIDENTIALITY
During the period of this Agreement, the Parties may wish to disclose
information to each other which is not generally available to the public and
which they wish maintained in confidence. "Confidential Information" shall
mean information which is marked "confidential" at the time it is provided by
one party to the other. In the case of information disclosed visually or
orally, such disclosure shall be identified as confidential when revealed and
summarized in a writing marked as confidential, referencing the date and type
of information disclosed, and delivered to disclosee within thirty (30) days
of such disclosure. Company and University hereby agree not to disclose
Confidential Information received from the other to any third party without
first obtaining the prior written permission of the disclosing party.
However, the Parties to this Agreement understand and agree that University
is a state-supported university and instrumentality of the State of Ohio and
subject to the Ohio Public Records Act, Ohio Revised Code 149.43, et seq.,
and that any record kept by University that is deemed a public record is
subject to release if a proper request is made. Company and University also
agree not to use Confidential Information received from the other for any
purpose other than for the performance of the work or as otherwise is
specifically authorized under this Agreement.
Confidential Information shall not include that which:
1) is publicly available prior to the date of this Agreement or becomes
publicly available thereafter through no wrongful act of Recipient;
2) was known to Recipient prior to the date of disclosure or becomes known
to Recipient thereafter from a third party having an apparent bona fide
right to disclose the information;
3) is disclosed by Recipient with the other Party's prior written approval;
4) is disclosed by Provider without restriction on further disclosure;
5) is independently developed by Recipient;
6) A party is obligated to produce pursuant to a valid public records
disclosure request if the requested information is deemed to be a public
record for which there is no applicable exception; or to an order of a
court of competent jurisdiction, or a valid administrative or
Congressional subpoena, provided that Recipient (a) promptly notifies the
Provider and (b) cooperates reasonably with the Provider's efforts to
contest or limit the scope of such order and (c) takes all necessary
steps to protect the confidentiality of the Confidential Information
including without limitation filing any documents with the court under
seal.
Company and University agree not to disclose Confidential Information that is
subject to regulation under U.S. export control laws. The Receiving Party
retains the right to refuse to accept any such information that is not
considered to be essential to the completion of the research hereunder.
ARTICLE 9. PUBLICATION RIGHTS
University reserves the right to publish in scientific journals or other
journals or to present at professional conferences or other meetings the
results of the project research conducted under this Agreement. However,
before publication the Principal Investigator will submit copies of the
manuscript to University; University will submit a copy to Company. If
either University or Company, or both, want to defer publication for one (1)
month after receipt of the manuscript so the Party or Parties may evaluate
the potential for patenting, the Principal Investigator will forebear
publication for the one (1) month period. In the event either Party desires
to submit an application, the Principal Investigator agrees to forego
publication until such time as a patent application has been filed or the
expiration of three (3) months from the date of submission of the manuscript
to University.
Company shall be named in the publication or presentation as the sponsor of
the project research. The right to review publications and presentations as
set forth herein shall extend only to the work product of the University
Principal Investigator pursuant to this project research and not to the work
product of other research conducted in the laboratories or offices of the
University Principal Investigator.
Article 10. Patent Rights, Joint Ownership, Responsibility for Patent
Prosecution, Costs and Expenses, Commercialization, Patent Infringement.
A. Patent Rights.
1. The purpose of the grant is to carry out specific protocols as specified
in greater detail in the Scope of Work set out in Attachment A.
2. Any Intellectual Property owned by any of the Parties on or prior to the
Effective Date of this Agreement is not subject to the provisions of this
Agreement unless expressly agreed to, in writing, by the Parties.
3. It is specifically understood that University does not own the compound
or any patent rights to the compound that is being tested in the laboratory
by the Key University Personnel identified above. However, in recognition of
the contributions of the University and Key University Personnel to the
research that is being carried out under the Scope of Work herein, University
will receive a ten percent (10%) non-dilutable portion of the proceeds due to
Company under any license it enters into for the compound unless the research
results in Joint Property as defined below. Joint Property will be governed
by the terms and conditions set forth below.
4. Faculty of the University must disclose any results of research or any
other potential intellectual property discovered by them to the University.
University will disclose to Company any discovery that results from the work
undertaken under the Scope of Work (the "Intellectual Property"). The
identity of the inventors and Investigators involved, their relative
contributions to the Intellectual Property, and where the inventors and
investigators are employed will be determined by the Parties. A negotiation
involving representatives of the Parties will take place to determine the
ownership or co-ownership of the Intellectual Property. These determinations
will be set forth in a separate contractual agreement. These contractual
agreements will survive termination of this Agreement. However, in all
events, the University will be given a non-exclusive license to the
Intellectual Property for research and educational purposes.
5. Except as expressly provided herein, nothing shall be deemed to grant
either directly or by implication, estoppel, or otherwise any license under
any patents, patent applications or other proprietary interests of any other
invention, discovery or improvement of either Party.
B. Joint Property/Ownership.
1. University and Company shall be joint owners of any jointly discovered
intellectual property ("Joint Property"), all know-how and information
relating to the Joint Property, any applications for patent protection which
may be filed on the Joint Property and each and every patent covering the
Joint Property that may be issued in the United States of America or in any
country foreign to the United States of America.
2. At the time that any discovery from the results of the collaborative
research is disclosed, the identity of the inventors and investigators
involved and, the institutions where the inventors and investigators have
their principal academic, clinic and research appointments will be determined
by the Parties. A meeting between the Parties will take place to determine
the relative contributions of the Inventors and the investigators, the
ownership or co-ownership of the Intellectual Property and the relative
shares of the division of any revenues generated from the commercialization
of the Intellectual Property. Such determinations will be documented in a
contractual agreement.
3. The contractual agreements will survive termination of this Agreement.
4. University will hold title to any Intellectual Property to the extent
required by Ohio Revised Code Section 3345.14, as subsequently amended.
5. The University will have in perpetuity a non-exclusive license to any
Joint Property for research and educational purposes, unless otherwise agreed
to by the Parties in writing.
C. Responsibility for Patent Prosecution.
1. Responsibility for preparing, filing, prosecuting and maintaining all
patent applications and patents relating to the Joint Property shall be upon
the Party whose Inventor is the Principal Investigator for the underlying
research that produced the Joint Property unless otherwise agreed to by the
Parties. If Inventors of each Party are equally responsible for the
direction of the research, the Parties will jointly determine who will
prosecute the patents.
2. Whichever Party prosecutes the patent application ("Performing Party")
shall consult with and keep the other Party fully informed as to the
preparation, filing, prosecution and maintenance of all patent applications
and patents issued covering the Joint Property. Decisions concerning the
preparation, filing, prosecution and maintenance of all patent applications
and patents covering the Joint Property shall be made by Performing Party,
giving due consideration to the comments of the other Party.
3. The prosecution or maintenance of any patent or patent applications shall
not be abandoned by the Performing Party without the written consent of the
other Party.
4. The Parties will each use their best efforts to assure that their
respective Inventors fully cooperate in the preparation, filing prosecution
and maintenance of all patent applications and patents relating to the Joint
Property. Any compensation or payment to the Inventors for reasonable
expenses for their cooperation in the preparation, filing, prosecution and
maintenance of such patent applications and patents shall be borne by the
Inventors' respective University or Company. Such expenses shall be
reimbursed to the Inventor's University or Company from its proceeds prior to
the division of any net proceeds under its Intellectual Property Policy or
practice.
D. Costs And Expenses
1. The Performing Party shall initially bear all costs and expenses
associated with preparing, filing, prosecuting and maintaining all patent
applications and patents relating to the Joint Property. These amounts shall
be repaid to the Performing Party. The Performing Party shall maintain
adequate records showing all expenses incurred, which records shall be made
available to the other Party for inspection on reasonable notice. Performing
Party may at any time request that the other Party pay one-half of all costs
and expenses initially borne by the Performing Party. Performing Party may
also forebear from recovering costs from the other Party until a license for
the Intellectual Property has been granted. At that time, all costs and
expenses paid to date by the Performing Party will be paid in full prior to
any other payments or distributions to the Parties or Inventors.
2. The Performing Party shall also be entitled to a two and one-half percent
(2.5%) administrative fee, calculated on the amount of proceeds remaining
after recoupment of reasonable expenses.
3. Performing Party may, upon reasonable notice to the other Party,
discontinue paying the expenses associated with any particular patent
application or patent. If the Performing Party decides to discontinue paying
the expenses for a particular patent application or patent, the other Party
may continue to pay such expenses in which event, the Party continuing to pay
the expenses shall own all right, title and interest in and to that patent
application or patent and the Party discontinuing payment shall have no
further rights in and to that particular patent application or patent, except
that the other Party will reimburse Performing Party for its prior out-of-
pocket expenses out of first income from a license for the Joint Property
unless otherwise agreed to in writing by the Parties.
E. Commercialization.
1. University and Company shall cooperate to achieve the commercial
utilization and exploitation of the Joint Property and shall keep each other
informed of all requests by third Parties concerning commercial utilization
or exploitation.
2. University and Company shall agree on which Party shall act as the Agent
of the other in negotiating reasonable license terms with industry, and
execute license agreements on behalf of the Parties for the commercialization
of the Joint Property. If the Parties cannot agree, the Performing Party
shall act as the Agent. The Agent may request the participation of the other
Party in some or all phases of the negotiations and document reviews. The
other Party may also request the opportunity to participate in some or all
phases of the negotiation. Approval to participate will not be unreasonably
withheld.
3. Both Parties shall have the right to review, comment upon and approve any
proposed license or amendment thereto, prior to signature. The Parties agree
that their respective approval will not be unreasonably withheld.
4. Any license agreement to the Joint Property shall be administered by the
Agent. Any reasonable expenses incurred by either Party in an effort to
license this invention shall be repaid to that Party out of the proceeds
prior to division of any net proceeds.
5. If the funding source imposes any obligations on the rights to the
Intellectual Property or the restrictions on commercialization these
restrictions must be disclosed prior to proceeding with any patent protection
or commercialization efforts.
6. Subject to the provisions contained herein, all proceeds received from
the licensing or other commercial utilization of the Joint Property shall be
shared as follows:
a. First, reasonable un-recouped expenses incurred by any Party in an effort
to patent and license, defend or otherwise protect and commercialize the
Joint Property shall be repaid to that Party. Such expenses will not include
the costs of paying employees of the Party for salary and wage expenses.
b. Second, fifty percent (50%) of the remaining proceeds will be distributed
to University and fifty percent (50%) of the remaining proceeds will be
distributed to Company unless otherwise agreed to in writing by the Parties.
c. The Inventors shall receive from their respective university or company
their respective share of royalty income and such other benefits, if any,
specified under the respective Intellectual Property Policy of each of the
Parties or under such other agreements as may exist between the Inventors and
their respective institutions. Neither the University nor the Company shall
be responsible to the other for the failure to properly fulfill its
obligations to their respective Inventors.
F. Patent Infringement.
1. Whenever an infringement of any patent relating to the Joint Property
comes to the attention of University or Company, the Party obtaining the
information shall notify the other Party and the best means of terminating
such infringement shall be discussed by the Parties. If the Parties agree to
commence an action for patent infringement, University and company shall
each pay one-half (1/2) of the reasonable expenses and disbursements in
connection with such action and all monies actually received as a result of
the patent infringement action shall be divided equally. If the Parties
cannot agree to commence an action for patent infringement, either Party
shall have the right to prosecute a patent infringement action, in which
event that Party (hereafter the "Acting Party") shall bear all the expense
and be entitled to retain all proceeds received as a result of such action.
The non-acting Party shall provide to the acting Party at the acting Party's
expense reasonable non-monetary assistance during any litigation or
proceedings regarding any Joint Property and shall execute, acknowledge,
deliver all instruments or documents that the acting Party may reasonably
request.
2. University and Company will each use their best efforts to assure that
their respective Inventors cooperate with and supply all assistance
reasonably requested in connection with any patent infringement action. Any
compensation or payment for reasonable expenses to the Inventors for their
cooperation and assistance shall be borne by the Inventors respective
institutions. Such compensation or payment shall be repaid to the respective
institution from the proceeds received as a result of the action.
3. If during a patent infringement action either University or Company
declines to continue to participate in the action then the Party wishing to
continue the action will pay all expenses going forward associated with such
action and retain all recoveries derived therefrom without reimbursement to
the declining Party of any expenses paid.
G. Disclaimer. Except as expressly provided above, nothing contained in
this Agreement shall be deemed to grant either directly or by implication,
estoppel, or otherwise any license under any patents, patent applications or
other proprietary interests of any other invention, discovery or improvement
of either party.
ARTICLE 11. Publicity.
A. 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,
except that University shall make available, upon request, the title and
description of a research project, the name of the researcher, and the amount
and source of funding provided for such project.
B. The University recognizes that the Sponsor is a fully reporting company
with the U.S. Securities and Exchange Commission and is subject to Rules and
Regulations of the Exchange Act. Therefore, the Sponsor may be required
under State and Federal laws to disseminate material information. The
University agrees not prevent the Sponsor from releasing its required
disclosures. Further, the Sponsor plans to apply for listing on a U.S. stock
exchange (i.e., OTC-Bulletin Board). During the application and listing
process the Sponsor will request a quiet period regarding the dissemination
of any news events. After the Sponsor becomes a public trading company,
these news events can be released.
ARTICLE 12. USE OF VERTEBRATE ANIMALS
Should warm-blooded animals be used in this project, University will comply
with the applicable portions of the Animal Welfare Act (P.L. 99-158) and will
follow the guidelines prescribed in the Public Health Services Policy on
Humane Care and Use of Laboratory Animals.
ARTICLE 13. AUDIT
University will maintain adequate financial records, in accordance with
generally accepted accounting practices, to clearly and easily identify
expenses to describe the nature of each expense and to establish relatedness
to this Agreement. The financial records of this Agreement must be retained
for a period of three (3) years.
ARTICLE 14. TITLE TO EQUIPMENT
In the event that University purchases equipment hereunder, title to such
equipment will vest in University upon acquisition.
ARTICLE 15. JURISDICTION
The Parties agree that this Agreement shall be governed by the laws of the
State of Ohio and that any action of proceeding hereto relating in any way to
this Agreement or the subject matter hereof shall be brought and enforced
exclusively in the competent courts of Ohio.
ARTICLE 16. RELATIONSHIP
Each Party hereto shall be deemed an independent contractor. Neither Party
is nor shall be considered an agent, employee, or representative of the
other. Nothing herein shall be construed or deemed to create a joint
venture, partnership, principal-agent, or employer-employee relationship
between the Parties.
ARTICLE 17. COMPLIANCE WITH THE LAW
University agrees to comply with all applicable federal, state, and local
laws in the conduct of the work hereunder. University accepts full
responsibility for payment of all unemployment compensation insurance, all
workers' compensation insurance, all income tax deductions, social security
deductions, and any and all other taxes or payroll deductions required for
all employees engaged by University in the performance of work authorized by
this Agreement.
ARTICLE 18. LIMITATION OF LIABILITY
The University is an Ohio state-supported institution of higher education and
an instrumentality of the State of Ohio and as such is prohibited by the Ohio
Constitution from agreeing to indemnify or hold harmless any other entity.
Nothing in this provision shall be construed or interpreted as a waiver of
the sovereign immunity of the University or the State of Ohio beyond the
waiver provided in Ohio Revised Code 2743.02.
Neither University, its employees, assignees nor subcontractors shall be
deemed employees of Company while performing under this Agreement. Nothing
herein shall be construed or deemed to create a joint venture, partnership,
principal-agent, or employer-employee relationship between the Parties.
ARTICLE 19. TERMINATION AND CANCELLATIONS
This Agreement shall terminate upon any of the following events:
A. Failure of University to perform the services required under this
Agreement;
B. The election of either Party to terminate this Agreement without cause by
giving written notice to the other Party at least thirty (30) days prior
to the termination date stated in such notice. In the event of
termination by Company, University will be paid for any services provided
prior to the date of the notice of termination;
C. Mutual agreement of the Parties, in writing and signed by both Parties.
ARTICLE 20. JURISDICTION
The Parties agree that this Agreement shall be governed by the laws of the
State of Ohio and that any action of proceeding hereto relating in any way to
this Agreement or the subject matter hereof shall be brought and enforced
exclusively in the competent courts of Ohio.
ARTICLE 21. RELATIONSHIP
Each Party hereto shall be deemed an independent contractor. Neither Party
is nor shall be considered an agent, employee, or representative of the
other. Nothing herein shall be construed or deemed to create a joint
venture, partnership, principal-agent, or employer-employee relationship
between the Parties.
ARTICLE 22. ASSIGNMENT
Neither this Agreement nor any right, duties or obligations described herein
shall be assigned by any Party hereto without the prior express written
consent of the other Parties.
ARTICLE 23. MISCELLANEOUS
A. If any provision of this Agreement shall be held invalid, illegal,
unenforceable, or inoperative, the balance of this Agreement shall remain in
full force and effect as if such provision had never been included in this
Agreement.
B. Failure to exercise any right under this Agreement does not constitute a
waiver of that right.
C. The terms of this Agreement shall be governed by and construed in
accordance with the laws of the State of Ohio and the policies of University.
D. Any changes to this Agreement must be in writing and signed by both
Parties.
E. This Agreement constitutes the entire Agreement and supersedes any
previous Agreement pertaining to these services whether written or oral.
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be
executed by their properly and duly authorized officers or representatives
as of the effective date.
ACCEPTED FOR:
Northeastern Ohio Universities
College of Medicine
/s/ Ashot Martirosyan 7.9.2010 /s/ Walter E. Horton, Jr. 6/8/2010
- ------------------------------- -----------------------------------
Signature Date Signature Date
Name: Ashot Martirosyan Walter E. Horton, Jr., Ph.D.
Vice President for Research
Title: President/CEO
Reviewed as to form and law by:
By: /s/ Maria R. Schimer
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Maria R. Schimer, Esq.
General Counsel
NEOUCOM
Date: 06/07/2010
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