Exhibit 10.18
RESEARCH AGREEMENT
RESEARCH AGREEMENT, effective as of March 7, 1997 (the
"Effective Date"), between THE TRUSTEES OF COLUMBIA UNIVERSITY IN THE CITY OF
NEW YORK, a New York corporation ("Columbia" or "Columbia Innovation
Enterprise"), and VIMRx GENOMICS, INC., a Delaware corporation (the "Company").
W I T N E S S E T H :
WHEREAS, Columbia has established the Columbia Genome Center
("Center") at its Health Sciences Division to engage in genomic projects; and
WHEREAS, the Company wishes to provide financial support for
research in the Center as described in this Agreement and in order to obtain
certain rights with respect to the results of the research;
NOW, THEREFORE, in consideration of the premises and the
mutual covenants herein contained, the parties hereby agree as follows:
Article I.
RESEARCH
1.1. Research Projects. (a) Columbia is, among other things,
engaged in, or proposes to engage in, as the case may be, certain Research
Projects (as hereinafter defined), including but not limited to those current
Research Projects described in Exhibit A, which have been selected by the
Director of the Center (the "Director") in consultation with the Company.
Research Projects will be conducted under the overall direction of the Director
in the Center or, after consultation with the Company, in the laboratories of
individual investigators at Columbia.
(b) Columbia represents and warrants to the Company that all
Projects (as hereinafter defined) listed on Exhibit A hereto conform in all
respects to the definition of "Research Projects" set forth below, and without
limiting its obligations hereunder, Columbia shall use reasonable efforts to
ensure that all Research Projects hereunder at all times continue to conform to
such definition.
(c) Columbia shall use reasonable efforts to direct to the
Center all Projects related to the discovery, mapping, sequencing or validation
of disease-related genes.
1.2. Certain Definitions.
(a) "Projects" shall mean cDNA mapping and sequencing,
gene discovery and other genomic projects.
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(b) "Research Projects" shall mean current and future
Projects selected by Columbia in consultation with the Company:
(i) which are related to the discovery, mapping,
sequencing or validation of disease-related
genes (in this context, "validation" shall
explicitly include activities undertaken to
identify and otherwise understand the
mechanism(s) of action by which any subject
gene or gene product carries on or controls
biological activity);
(ii) which are deemed to be scientifically or
medically significant and to have a high
probability of resulting in a discovery of
therapeutic or diagnostic value;
(iii) which are under the immediate direction of
one or more Columbia faculty members or
other researchers, whether or not affiliated
with Columbia ("Principal Investigators")
each of whom has executed and delivered to
the Director a letter agreement in
substantially the form of Exhibit B hereto
or such other agreement as may be reasonably
satisfactory to the Company (hereinafter an
"Investigator Letter");
(iv) the scientific staff of which consists
entirely of researchers, students,
post-doctoral students and other scientists
(together with Principal Investigators,
"Investigators") each of whom has also
executed and delivered to the Director an
Investigator Letter;
(v) with respect to which no third party
(whether a for profit or not for profit
entity) has rights to, rights to acquire, or
rights to negotiate to acquire (by reason of
funding such Project or otherwise) any
intellectual property rights therein, or a
license thereto, except, and to the extent,
agencies of the United States government may
have rights under 35 U.S.C. xx.xx. 200 et
seq. (any such non-governmental party being
hereinafter a "Commercial Third Party"); and
(vi) which receive Direct Support (as
defined in Section 2.1) as hereinafter
provided.
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(c) "Other Projects" shall mean Projects with respect to which
no Commercial Third Party has rights to, rights to acquire, or rights to
negotiate to acquire (by reason of funding such Project or otherwise) any
intellectual property rights therein, or a license thereto.
(d) "Excluded Projects" shall mean Projects with respect to
which one or more Commercial Third Parties have rights to, rights to acquire, or
rights to negotiate to acquire (by reason of funding such Project or otherwise)
any intellectual property rights therein, or a license thereto.
1.3. Columbia Governance of Research. (a) Columbia will be
solely responsible for the governance of all research conducted in the Center
and on all Research Projects under this Agreement.
(b) All Investigators working on Research Projects or engaged
in Research Project-related work under this Agreement, as well as senior
administrative staff with access to Confidential Information and/or VGI
Information (each as hereinafter defined), will be required to sign an
Investigator Letter, and no Investigator who has not signed an Investigator
Letter shall participate in any Research Project. Promptly after receipt
thereof, Columbia shall deliver to the Company a copy of each Investigator
Letter received by it during the term of this Agreement (including any Renewal
Term, as hereinafter defined).
1.4. No Specific Result. Nothing in this Agreement will be
construed as a promise by Columbia to achieve any specific research result.
1.5. Excluded Projects. (a) In the event a third party,
including a Columbia faculty member, researcher or employee who has not signed
an Investigator Letter, requests the Center to undertake a Project which is
classifiable as an Excluded Project, Columbia shall use reasonable efforts to
cause such Project to conform to all such criteria, or as many of such criteria
as possible, thereby making such Project eligible to become a Research Project
or an Other Project. In the event Columbia is unable to do so, but nevertheless
decides to undertake such Project, no Direct Support shall be applied thereto,
and the Company shall have no right to license intellectual property arising
therefrom. Columbia agrees that it shall not actively seek, and shall refrain
from soliciting to undertake, in the Center, any Excluded Project or any Project
likely to become an Excluded Project, but may undertake an Excluded Project
brought to the attention of the Director by third parties described above in
this subsection.
(b) Attached as Exhibit C is a list of all Projects in which
any Commercial Third Parties currently have any rights. It is understood and
agreed that such Projects are currently neither Research Projects nor Other
Projects and that the Company shall have no right to any intellectual property
which may arise out of any such Project.
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(c) Columbia will, after consultation with the Company, adopt
procedures to ensure, and shall ensure, that (i) no Invention, Research Project
Information, Confidential Information or VGI Information (as each such term is
hereinafter defined) is disclosed to any Commercial Third Party or to any person
participating in any Excluded Project in violation of this Section 1.5(c), or
Article IV hereof or any Investigator Letter, and (ii) that no Commercial Third
Party will acquire any rights in any Invention, Research Project Information,
Confidential Information or VGI Information. No Investigator who at that time is
participating in any Excluded Project which is in an area related to a Research
Project and is potentially competitive therewith shall be permitted to
participate in such Research Project without the prior written consent of the
Company, which shall not be unreasonably withheld.
1.6. Title to Property. Title to all equipment acquired by
Columbia to conduct research in the Center or on Research Projects and all
materials and other tangible results of research conducted in the Center or on
Research Projects will vest in Columbia upon acquisition. The foregoing shall
not be construed so as to prevent the Company from purchasing equipment (and
retaining title thereto), or leasing equipment (with the lessor thereof
retaining title thereto) and loaning such equipment to Columbia for the purpose
of conducting Research Projects.
1.7. Company Access. To permit and facilitate the Company's
performance of its obligations and exercise of its rights hereunder, Columbia
will ensure that Company personnel have regular and meaningful access to the
Director, all Principal Investigators and all Investigators.
1.8. Independent Contractors. The Company and Columbia are
independent contractors and neither is an agent, joint venturer or partner of
the other.
Article II.
SUPPORT FOR THE CENTER
2.1. Direct and Overhead Support. Subject to all the other
terms and conditions of this Agreement, during the five-year period beginning on
the Effective Date, the Company will pay to Columbia $30.0 million for the
support of the Center as follows:
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Year Direct Support Overhead Total
---- -------------- -------- -----
1 $3.5 million $1.2 million $4.7 million
2 4.0 million 1.3 million 5.3 million
3 4.5 million 1.5 million 6.0 million
4 5.0 million 1.7 million 6.7 million
5 5.5 million 1.8 million 7.3 million
Total $22.5 million $7.5 million $30.0 million
----- ------------- ------------ -------------
2.2. Payment. The above payments, and the payments, if any,
payable pursuant to Section 8.2 hereof, shall be made in quarterly installments
in advance, with the first payment due on the fifth business day following the
Effective Date, and all subsequent payments due on the first day of each
succeeding calendar quarter beginning after the Effective Date. In the event any
payment is due on a day on which the banks in New York City are authorized or
required to close, such payment shall be due and payable on the next succeeding
business day.
2.3. VIMRx Shares. As an additional one-time payment, as soon
as practicable, but not more than 30 days, after the Effective Date, the Company
shall cause its corporate parent, VIMRx Pharmaceuticals Inc. ("VIMRx") to issue
to Columbia 200,000 shares of VIMRx common stock (the "VIMRx Shares"), which
shall be nonrefundable and noncreditable against royalties or any other
payments. Columbia represents and warrants that it is acquiring the VIMRx shares
for its own account for investment and without a view to the distribution or
resale thereof. The VIMRx Shares shall be subject to the restrictions set forth
in Exhibit D hereto, and Columbia shall have the registration rights described
in Exhibit D hereto with respect to the VIMRx Shares.
2.4. Government Funding. Columbia shall use reasonable
efforts, consistent with the provisions of this Agreement, to obtain government
funding for the Center, and the Company shall cooperate with such efforts. If
any such government funding is solicited, Columbia agrees to elect to retain or
obtain any government patent rights arising from any governmentally funded
Projects in accordance with the provisions of 35 U.S.C. Sec. 202, et seq.
2.5. Use of Support. (a) Overhead Support shall be used in
such manner as Columbia sees fit.
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(b) No Direct Support shall be applied to any Other Project or
any Excluded Project. Between Seventy-Five percent (75%) and Eighty-Five percent
(85%) of the Direct Support shall be used for Research Projects in the Center
and the remainder for Research Projects in the laboratories of individual
investigators at Columbia, subject to annual review of such allocation by the
Company and Columbia and mutually agreeable modifications.
(c) After consultation with the Company, Columbia may from
time to time may discontinue a Research Project. Discontinuation may be
triggered by low probability of success, cost deemed to be excessive relative to
the likelihood of commercial success, or preemptive discoveries. In the event a
Research Project is proposed to be discontinued for lack of sufficient funding,
Columbia shall so notify the Company and the Company may, in its discretion,
provide the funding necessary for such Project to continue, in which event it
will continue as a Research Project. In the event the Company does not elect to
provide such funding, Columbia may obtain other funding for such Project.
Article III.
REPORTS AND NOTICES
3.1. Project Reporting. (a) Columbia shall provide the
Company with a non-confidential description of any Project which the Center
proposes to undertake, within a reasonable period after any such Project comes
to the attention of the Director. Such notification shall include a
representation as to whether such project conforms to the criteria set forth in
Section 1.2(b)(i) through (v) hereof.
(b) As soon as practicable after the execution and delivery of
this Agreement, Columbia shall notify the Company of the identities of all
Investigators working on Research Projects and Other Projects and, as soon as
practicable after any such changes are made, shall notify the Company of any
changes in Investigators working on Research Projects.
(c) Columbia Innovation Enterprise will promptly prepare and
deliver an Invention Disclosure Report in form and substance reasonably
satisfactory to the Company with respect to any new and useful process, machine,
manufacture or composition of matter conceived of or first reduced to practice
by the Director or any Investigator during the term of this Agreement and
arising from any Research Project hereunder ("Invention").
(d) Columbia will furnish the Company semiannually with (i) a
written report summarizing in reasonable detail Research Project-related work
not previously reported pursuant to Section 3.1(c) hereof, which shall include a
representation that all Research Projects continue to conform to the criteria
listed in Section 1.2(a) hereof, and (ii) a Research Project Information Report
in form and substance reasonably satisfactory to the Company with respect to
information and materials (including any chemical compound or substances,
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biological cell, or component thereof, whether derived from biological material
or synthesized) developed in the course of a Research Project hereunder, but
which does not constitute an Invention ("Research Project Information").
(e) Subject to obtaining the consent of the Principal
Investigator(s) of each such Project, the semi-annual report will also contain a
description of all Other Projects and Excluded Projects, including both
disease-related and non-disease related Projects being conducted in the Center
and in the laboratories of individual investigators at Columbia who are being
supported by the Center, but shall not contain any patentable or otherwise
confidential information, and need not identify any Commercial Third Party.
(f) As soon as practicable after the execution and delivery of
this Agreement, Columbia will deliver to the Company a list of all applications
for, grants and other funding submitted to governmental and not-for-profit
agencies, by or on behalf of the Center or any Investigator working on a
Research Project, and which relate to ongoing Research Projects, together with
an abstract or summary of each such application, which abstract or summary shall
include the names of the Investigators on such application. Columbia shall also
advise the Company in writing of all funding decisions made on such applications
as soon as practicable after such decisions are made. The semi-annual report
described above shall also include updated information called for by this
paragraph.
3.2. Financial Records and Reports (a) Columbia will
maintain records of its expenditures of funds received under this Agreement in
accordance with its customary accounting policies and procedures. Columbia
represents and warrants that such policies and procedures include and shall
include complete Project-by-Project budgeting and accounting, an annual budget
for each Research Project and semiannual Project-by-Project reports of actual
vs. budgeted expenditures, similar to the procedures required by the National
Institutes of Health.
(b) For two years after the termination of this Agreement, the
Company, at its own expense and on reasonable notice and during normal business
hours, may examine Columbia's accounting records with respect to expenditures
under this Agreement for the year.
3.3. Notices Any notice required or permitted to be given
under this Agreement shall be in writing and shall be either personally
delivered (including by recognized overnight delivery services such as FedEx) or
sent by certified mail (return receipt requested), postage or other charges
prepaid,
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if to Columbia, to: Executive Director
Columbia Innovation Enterprise
Columbia University
000 Xxxx 000xx Xx., Mail Code 2206
000 Xxxxxxxxxxx Xxxxxxx
Xxx Xxxx, Xxx Xxxx 00000
copy to: General Counsel
Columbia University
000 Xxxx 000xx Xx., Mail Code 4308
000 Xxx Xxxxxxxx Xxxxxxx
Xxx Xxxx, Xxx Xxxx 00000
if to the Company, to: VIMRx Genomics, Inc.
0000 Xxxxxxxxxxx Xxxx
Xxxxxxxxxx, Xxxxxxxx 00000
Attn: Xx. Xxxxxxx X. Xxxxxxx
copy to: Xxxxxxx Xxxxxx & Green, P.C.
000 Xxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attn: Xxxxxx X. Xxxxxxxxxx, Esq.
or to such other address as a party may specify by notice given in accordance
with the terms hereof. All notices shall be deemed given upon receipt.
Article IV.
CONFIDENTIALITY AND RELATED OBLIGATIONS
REVIEW AND FREEDOM OF PUBLICATION
4.1. Company Obligations; VGI Information. (a) The Company
will treat as confidential all reports and information disclosed to it under
Article III, as well as any other reports, information and materials furnished
hereunder which Columbia has designated as "Confidential." Accordingly, except
to the extent permitted under a license agreement entered into pursuant to this
Agreement, or as required by law or appropriate for the performance or
enforcement of this Agreement, for the term of this Agreement, the Company will
not disclose nor use for its own or any third party's benefit (other than as
contemplated hereby) or make available any information disclosed hereunder to
any third party (other than independent contractors retained by the Company in
connection with its performance of this Agreement who are under an obligation of
confidentiality with respect to this Agreement), without Columbia's written
permission and will use information only for the purpose of evaluating its
interest in future research or possible commercial development of the results of
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research in the Center, or in connection with possible investment in or sale of
the Company, provided, however, that the Company does not need Columbia's
consent to disclose such information to third parties, provided such disclosure
is pursuant to a written confidentiality agreement, for the purpose of
evaluating future research or possible commercial development of such
information, or possible investment in or sale of the Company.
(b) Neither party will use the name, logo, insignia, or
symbols of the other, including but not limited to those of the faculties or
departments of Columbia or of the Center), or any variation or combination
thereof, or the name of any officer, director, trustee, faculty member, other
employee, or student of either party for any purpose whatsoever without the
other party's prior written consent, provided, however, that either party (or
VIMRx) may, from time to time prior to or after the termination of this
Agreement, publicly disclose any information set forth in the Disclosure
Memorandum attached hereto as Exhibit E, as such Disclosure Memorandum may be
amended form time to time, as well as any other information required to be
disclosed pursuant to the federal securities and other applicable laws.
(c) The Company may, but is not obligated to, disclose
proprietary or otherwise confidential information of the Company ("VGI
Information") to Columbia. Columbia may, but is not obligated to, receive VGI
Information from the Company. VGI Information shall only include information
which the Company has designated in writing as "Confidential" and which the
Company submits (at the time of, or within fifteen days after, disclosure) so
marked to Columbia Innovation Enterprise.
4.2. Freedom of Publication. The Company acknowledges that
Columbia is dedicated to free scholarly exchange and to public dissemination of
the results of its scholarly activities. Except for Columbia's obligations of
confidence set forth in Section 4.3 and the obligations, set forth in their
respective Investigator Letters, of the individuals conducting research, nothing
in this Agreement shall restrict the right of Columbia and its faculty and other
employees to publish, disseminate or otherwise disclose research conducted
pursuant to this Agreement.
4.3. Review of Disclosures. Columbia Innovation Enterprise
will promptly deliver to the Company copies of all proposed public disclosures
of Confidential Information (as hereinafter defined) it receives pursuant to
Investigator Letters or otherwise, but no later than ten business days after
receipt. The Company will promptly review the proposed public disclosures, and,
if, as determined by the Company in its sole discretion, it can do so without
compromising its present or potential patent rights, waive all or a portion of
the applicable review periods set forth in Exhibit B. The Company will review
portions of proposed public disclosures, as they are made available, and will
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conduct its review of such portions in a manner comparable to its review of
complete proposed public disclosures. Material alteration of reviewed and
approved disclosures prior to disclosure will necessitate initiation of a new
review cycle with its associated review period set forth in Exhibit B. At the
end of the review periods set forth in Exhibit B, the authors will have the
right, in their sole discretion, to make such proposed public disclosures. For
clarity, it is understood and agreed that this Section 4.3 applies to proposed
public disclosures of Confidential Information only. Any and all disclosures of
VGI Information shall require the prior written consent of the Company, which
may be granted or withheld in its sole discretion.
4.4. Columbia Obligations. (a) Except as set forth in Section
4.3 above, or in Section 4.5, or (subject to the provisions of Section 4.6) as
required by law or appropriate for the performance or enforcement of this
Agreement, until the expiration or termination of this Agreement, or, if
earlier, until such time as Columbia becomes free to enter into a license
agreement with a third party with respect to such Inventions, reports,
information or other intellectual property, pursuant to the provisions of
Article VI hereof:
(i) Columbia will not, without the Company's written
permission, publicly disclose or use for its own or any third party's benefit
(other than as contemplated hereby) or make available any to any third party
(other than independent contractors retained by Columbia in connection with its
performance of this Agreement who are under an obligation of confidentiality
with respect to this Agreement) any Inventions, reports or information arising
out of or related to Research Projects (herein, "Confidential Information"); and
(ii) Columbia will treat as confidential all VGI Information,
will not disclose or use for its own or any third party's benefit (other than as
contemplated hereby) or make available any such VGI Information to any third
party (other than independent contractors retained by Columbia in connection
with its performance of this Agreement who are under an obligation of
confidentiality with respect to this Agreement) without the Company's written
permission.
(b) For purposes of this Article IV, "disclosure" means any
communication of information deemed to be disclosure by the U.S. Patent and
Trademark Office, examples of which include but are not limited to publication
in scientific journals or other print or electronic media, oral or written
presentation of information at scientific meetings, and public presentation of
information to any individual or group of individuals not bound by a
confidentiality obligation with respect to non-disclosure of the information.
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4.5. Exceptions to Confidentiality. The obligations of
confidentiality and non-use under Sections 4.1 and 4.4 do not apply to any
information which:
(a) was known, other than pursuant to this
Agreement or the research contemplated
hereby, to the party receiving the
information prior to receipt thereof from
the other party;
(b) was or becomes a matter of public
information or publicly available by reason
of filing for patent protection or otherwise
through no fault of the party receiving the
information or persons acting for it or on
its behalf;
(c) is acquired, other than pursuant to this
Agreement or the research contemplated
hereby, by the party receiving the
information from a third party entitled to
disclose the information to it; or
(d) the other party develops independently,
other than pursuant to this Agreement or the
research contemplated hereby.
4.6. Disclosure by Law. In the event that either party or any
principal, affiliate, director, officer, employee, agent, controlling person or
other representative (including attorneys, accountants, and financial and
scientific advisors) of such party (hereinafter, "Representative") of either
party is requested pursuant to, or required by, applicable law or regulation or
by legal process to disclose any Confidential Information (and in the event any
Representative of Columbia is so requested or required to disclose VGI
Information), such party agrees that as soon as practicable and, in any event,
prior to compliance with any such request or legal process, it will provide the
other party with written notice of such request or legal process to enable the
other party to seek an appropriate protective order. In the event that such
protective order or other remedy is not obtained, such party agrees to furnish
only that portion of the Confidential Information or VGI Information which, in
the opinion of counsel, it is legally compelled to disclose and to use
reasonable efforts to obtain assurance that, if possible, confidential treatment
will be accorded the Confidential Information and/or VGI Information. Any such
disclosure of Confidential Information or VGI Information (except any disclosure
of VGI Information by the Company) shall be made after prior consultation with
the other party as to the content, timing and manner of dissemination of such
disclosure.
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Article V.
PATENT PROSECUTION
5.1. Preparation, Filing and Prosecution. Subject to the
provisions of Section 4.3 hereof and any license agreement subsequently entered
into between the parties hereto, the preparation, filing and prosecution of
patent applications covering Inventions hereunder, and the decisions as to
whether and where to seek patent protection, shall be solely within the
discretion of Columbia and at Columbia's expense, provided, however, that
Columbia shall consult with the Company regarding such matters and shall submit
to the Company for its review and comment a copy of all proposed patent
applications and other patent filings relating to any Invention at least 10 days
prior to filing thereof.
5.2. Reimbursement. If the Company licenses any Invention, it
shall promptly reimburse Columbia for reasonable and documented patent
prosecution and maintenance expenses, and shall assume responsibility for all
further such expenses, all as set forth in, and subject to, the applicable
license agreement.
5.3. Abandonment. Columbia will notify the Company in writing
if it decides not to seek patent protection for any Invention or to abandon an
application already filed, and will allow the Company to license such Invention
on the terms and conditions of the form of License Agreement attached hereto as
Exhibit F.
Article VI.
INTELLECTUAL PROPERTY RIGHTS
6.1. Company Licenses - Research Projects (a) Subject to any
limitations imposed by law or by the terms of any government grant, government
contract, or Cooperative Research and Development Agreement with a government
agency ("CRADA"), Columbia will grant to the Company a license in substantially
the form attached hereto as Exhibit F, at royalty rates and other payment terms
as set forth therein, for any Invention or Research Project Information
excluding, however, research developments not related to the discovery, mapping,
sequencing or validation of disease-related genes, such as methods, procedures,
algorithms, and technologies related to basic science (collectively, "Reserved
Developments"). The Company at any time may request that Columbia enter into
such a license by notice in writing to Columbia accompanied by a completed
written license agreement in substantially the form attached hereto as Exhibit
F, executed on behalf of the Company by an authorized representative of the
Company.
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(b) The foregoing notwithstanding, in the event the Company in
good faith believes any Reserved Development(s) arising out of a Research
Project to be commercially exploitable, and requests a license thereto, Columbia
shall negotiate in good faith the terms and conditions of a license to such
Reserved Development(s) prior to entering into any such negotiations with any
other party. Any such license need not conform to the provisions of Exhibit F.
(c) Columbia may at any time, and prior to entering into any
license agreement for any Invention or Research Project Information with any
third party, shall, request the Company to enter into a license to such
Invention or Research Project Information. Such request shall be by notice in
writing, shall be captioned "Request to Enter Into License" and shall reference
this section of this Agreement. If the Company does not tender to Columbia a
license of such Invention or Research Project Information on substantially the
terms and conditions of the form of License Agreement attached hereto as Exhibit
F within six months of such written request, Columbia shall be free to enter
into a license agreement with a third party.
(d) In the event the Company, by notice in writing, tenders to
Columbia a license of any Invention, Research Project Information or Material,
whether pursuant to Columbia's request to the Company or the Company's request
to Columbia, and Columbia fails to deliver an executed counterpart thereof to
the Company within 90 days of the date such license is tendered, either party
may commence an arbitration pursuant to the provisions of Section 9.4 hereof.
The arbitration panel shall resolve all disputed issues related to such License,
including, if applicable, (i) deciding whether all or any portion of the
Invention, Research Project Information or Material proposed to be licensed
constitute Reserved Developments, (ii) whether the tendered license conforms to
the terms and conditions of Exhibit F hereof, and (iii) whether the
commercialization schedule set forth in such license is reasonable in light of
prevailing industry and market conditions and the Company's resources. The panel
shall decide whether any license to the intellectual property proposed to be
licensed is required to be granted under the terms hereof, and shall render a
written decision on all disputed issues. If a license is required to be granted
under the terms of this Agreement, and the parties so request, the panel shall
engage a neutral attorney to draft the text of any disputed provisions, which
draft text shall incorporate the panel's decision on any such disputed
provisions. Columbia shall be required to execute and deliver to the Company a
license agreement incorporating the panel's decision and otherwise on the terms
and conditions of Exhibit F hereof (the "Arbitral License"). In the event the
Company declines to accept a license agreement on such form, Columbia shall be
free to enter into one or more licenses, with any third party, of the Invention,
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Research Project Information or Material to have been licensed pursuant to the
Arbitral License.
6.2. Title to Inventions and Research Project Information.
Subject to the Company's license rights described in this Article VI, Columbia
will have sole right, title, and interest to any Inventions and Research Project
Information.
6.3. Company Licenses - Other Projects. Subject to any
limitations imposed by law or by the terms of a government grant, government
contract or CRADA, and provided that Columbia obtains the agreement of the
Investigator(s) engaged in the research in question, and, if necessary that of
(i) any person from another institution collaborating with an Investigator(s) in
connection with the research; and/or (ii) any Commercial Third Party with rights
with respect to such research, Columbia will negotiate in good faith, prior to
entering into any such negotiations with any other party, the terms and
conditions of a license to the Company of intellectual property arising out of
Other Projects, including Reserved Developments in cases where the Company in
good faith believes such Reserved Developments to be commercially exploitable.
Any such license need not conform to the provisions of Exhibit F.
6.4. Other Developments. Columbia will periodically meet with
representatives of the Company to discuss health-related developments (including
but not limited to medical therapeutic and diagnostic developments) arising in
the Center, the Medical School, the Health Sciences Division or anywhere else in
Columbia University. If mutually agreed, the parties may discuss licensing of
any such developments to the Company. Without derogating from the Company's
obligations set forth elsewhere in this Agreement, this Section 6.4 shall not be
construed as an obligation on the part of Columbia to disclose any confidential
information, or to negotiate or grant any license to any development.
6.5. Invention Expenses. In the event Columbia grants to any
third party a license of any Invention or grants or assigns any other
intellectual property rights subject to or contemplated by this Agreement
whether arising out of a Research Project, a former Research Project or
otherwise, Columbia shall so advise the Company, and the Company at its option
may submit to Columbia an accounting of all reasonable expenditures made by the
Company arising out of or related to such Invention or other intellectual
property, including direct support of the Project from which the Invention or
other intellectual property was conceived, and costs and expenses of patent
prosecution paid by the Company ("Invention Expenses"). In each such event,
Columbia shall remit to the Company fifty percent (50%) of all royalties and
other payments received by it in respect of such license, assignment or other
rights until such time as all Invention Expenses in respect of such Invention or
other intellectual property are reimbursed to the Company.
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Article VII.
REPRESENTATIONS AND WARRANTIES
7.1. Representations and Warranties of Columbia. Columbia
represents and warrants to the Company, as of the date hereof, as follows:
(a) Columbia is a not-for-profit corporation organized and in
good standing under the law of the State of New York.
(b) Columbia has all requisite corporate power and authority
and all necessary licenses and permits to own and operate the Center and to
carry on the activities of the Center as now conducted and as currently proposed
to be conducted.
(c) The execution and delivery of this Agreement, any License
Agreement substantially in the form of Exhibit F hereto, and any other documents
or transactions contemplated hereby are within the corporate powers of, and have
been duly and effectively authorized by, all necessary corporate and other
action on the part of Columbia and do not violate, conflict with or result in
any breach of any of the terms, conditions or provisions of, or constitute a
default under, or result in the creation or imposition of any lien, charge or
encumbrance upon any property or asset of Columbia pursuant to any indenture,
loan agreement, or other agreement or instrument or corporate restriction to
which Columbia is a party or by which Columbia, its properties or operations may
be bound, and such action will not result in any violation of the provisions of
the certificate of incorporation or bylaws or similar incorporating or governing
documents of Columbia or any laws, ordinances, governmental rules or regulations
of courts or other governmental orders to which Columbia, its properties or
operations is subject.
(d) No consent, approval or authorization of any third party,
or filing, registration or qualification with any governmental authority (other
than those, if any, already obtained) is required on the part of Columbia as a
condition to the execution and delivery of this Agreement.
(e) This Agreement is a legal, valid and binding obligation of
Columbia enforceable against Columbia in accordance with its terms, except as
enforcement may be limited by bankruptcy, insolvency, moratorium, preference,
fraudulent conveyance or other laws affecting the enforcement of creditors'
rights or remedies generally, now or hereafter in effect, and subject to the
application of equitable principles and the availability of equitable remedies.
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7.2. Representations and Warranties of the Company. The
Company represents and warrants to Columbia as of the date hereof, as follows:
(a) The Company is a corporation organized and in good
standing under the law of the State of Delaware.
(b) The Company has all requisite corporate power and
authority and all necessary licenses and permits to own and operate its
properties and to carry on its activities as now conducted and as currently
proposed to be conducted.
(c) The execution and delivery of this Agreement, any License
Agreement substantially in the form of Exhibit F. hereto, and any other
documents or transactions contemplated hereby are within the corporate powers
of, and have been duly and effectively authorized by, all necessary corporate
and other action on the part of the Company and do not violate, conflict with or
result in any breach of any of the terms, conditions or provisions of, or
constitute a default under, or result in the creation or imposition of any lien,
charge or encumbrance upon any property or asset of the Company pursuant to any
indenture, loan agreement, or other agreement or instrument or corporate
restriction to which the Company is a party or by which the Company, its
properties or operations may be bound, and such action will not result in any
violation of the provisions of the certificate of incorporation or bylaws or
similar incorporating or governing documents of the Company or any laws,
ordinances, governmental rules or regulations of courts or other governmental
orders to which the Company, its properties or operations is subject.
(d) No consent, approval or authorization of any third party,
or filing, registration or qualification with any governmental authority (other
than those, if any, already obtained or effected) is required on the part of the
Company as a condition to the execution and delivery of this Agreement.
(e) This Agreement is a legal, valid and binding obligation of
the Company enforceable against the Company in accordance with its terms, except
as enforcement may be limited by bankruptcy, insolvency, moratorium, preference,
fraudulent conveyance or other laws affecting the enforcement of creditors'
rights or remedies generally, now or hereafter in effect, and subject to the
application of equitable principles and the availability of equitable remedies.
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Article VIII.
TERM AND TERMINATION.
8.1. Initial Term. This Agreement shall be effective as of the
Effective Date and shall continue in full force and effect, unless earlier
terminated as herein provided, for five years thereafter (such five-year period,
the "Initial Term").
8.2. Renewal Term. (a) Unless terminated pursuant to the
provisions of Section 8.3 below, this Agreement shall continue in full force and
effect for successive two-year periods beyond the expiration of the Initial Term
(each such period, a "Renewal Term"), provided that in the absence of an
agreement to the contrary, the amount of support (i.e., Direct Support and
Overhead) payable by the Company shall be increased by 9.0% over the amount of
support provided during the previous year.
(b) Commencing on the date falling one year before the
expiration of the Initial Term or six months before the expiration of any
Renewal Term, the parties shall commence negotiations regarding the exact amount
of support to be provided by the Company during any subsequent Renewal Term, it
being contemplated that the amount of any such support shall be increased by
between 5% and 10% over the previous year, as the parties may agree.
8.3. Termination. (a)Notwithstanding the provisions of Section
8.1, the Company may terminate this Agreement during the Initial Term hereof by
giving at least six months' notice, such termination to be effective no earlier
than 30 months after the Effective Date.
(b) Notwithstanding the provisions of Section 8.2, either the
Company or Columbia may terminate this Agreement during any Renewal Term hereof
by giving at least six months' notice.
(c) Upon 30 days' prior written notice either party may
terminate this Agreement by reason of a material breach of this Agreement by the
other party, if such breach has not been cured within 30 days after written
notice of the breach has been given.
(d) This Agreement shall automatically terminate if either
party commits any act of bankruptcy, becomes insolvent, files a petition under
any bankruptcy or insolvency act or has any such petition filed against it.
8.4. Effect of Termination. (a) On termination of this
Agreement because of the Company's material breach, the Company will have no
further rights hereunder, all licenses granted pursuant to Article VI shall
automatically terminate on the effective date of termination of this Agreement,
and any sublicenses granted by the Company under any such license shall be
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assigned to and assumed by Columbia, and each sublicense shall so provide.
(b) For purposes of this Agreement, "material breach" by the
Company shall mean a breach of its payment obligations under Article II and/or
Section 8.2 hereof which shall not be remedied after all applicable notice and
cure periods have elapsed.
8.5. Survival. (a) The Company's obligations under Sections
2.3 (with respect to registration rights), Section 4.1 and Article V and, except
for termination because of the Company's material breach hereof, the Company's
rights under licenses granted under Article VI prior to termination shall
survive the termination of this Agreement.
(b) Unless this Agreement is terminated by reason of the
Company's material breach hereof, the Company's rights under Article VI to
obtain licenses to Inventions and Research Project Information developed prior
to the effective date of termination hereof shall survive the termination of
this Agreement and shall be subject to the terms, conditions and time limits set
forth in Article VI. All rights to any Invention or Research Project Information
not licensed to the Company pursuant to this Agreement shall revert to Columbia.
Article IX.
MISCELLANEOUS
9.1. Assignment. This Agreement may not be assigned by either
party without the consent of the other party, provided, however, the Company may
assign this Agreement to a person or entity who acquires, by purchase, merger or
otherwise, all or substantially all the assets of the Company, and who assumes
all the obligations of the Company hereunder, without obtaining the consent of
Columbia. Any purported assignment or delegation in violation of this Section
9.1 shall be null and void ab initio.
9.2. Entire Agreement; Amendment. This Agreement sets forth
the entire agreement between the parties relating to the subject matter hereof
and supersedes all previous agreements, written or oral. This Agreement may be
amended only by an instrument in writing duly executed on behalf of the parties.
9.3. Audubon Lease. The Company may, at its option, lease an
office in Columbia's Audubon building.
9.4. Governing Law; Arbitration. (a) This Agreement shall be
governed by New York law applicable to agreements made and to be performed in
New York. Each party hereby submits to the jurisdiction of the state and federal
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courts sitting in the County of New York, and agrees that service of process may
be effected by written notice given in accordance with the terms hereof.
(b) In the event of any dispute which pursuant to this
Agreement is to be resolved by arbitration, whether hereunder or under any
License Agreement to be entered into pursuant hereto, such arbitration shall be
conducted in New York, New York before three arbitrators, by the American
Arbitration Association ("AAA") pursuant to its Commercial Arbitration Rules, as
the same may be amended from time to time. The panel shall consist of three
arbitrators. Two of the arbitrators shall be nominated by the respective parties
within fifteen (15) days of commencement of the arbitration, and the third (who
shall serve as chairman of the panel) shall be nominated by the party-nominated
arbitrators within thirty (30) days of commencement of the arbitration. Each
party shall nominate, and the party-nominated arbitrators shall nominate,
arbitrators with qualifications appropriate to decide the issues in dispute.
Each party hereto agrees to participate therein diligently and in good faith.
The determination made in any such arbitration shall be binding on the parties
hereto and may be entered for judgment in any court of competent jurisdiction.
All fees and expenses of the arbitrator(s) and of the AAA itself shall be borne
equally by the parties.
9.5. Waiver of BreachIX.5. Waiver of Breach. The waiver by a
party of a breach or violation by the other party of any provision of this
Agreement shall not operate or be construed as a waiver of any subsequent breach
or violation by any party of the same or any other provision of this Agreement.
No such waiver shall be effective unless in writing signed by the party claimed
to have made the waiver.
9.6. Headings. The headings of the sections and paragraphs of
this Agreement are inserted for convenience of reference only and shall not
constitute a part hereof.IX.6. Headings. The headings of the sections and
paragraphs of this Agreement are inserted for convenience of reference only and
shall not constitute a part hereof.
9.7. Multiple Counterparts. This Agreement may be signed in
any number of counterparts which taken together shall constitute one and the
same instrument.
9.8. Exhibits, SchedulesIX.8. Exhibits, Schedules. All
Exhibits and Schedules referred to in this Agreement are attached hereto and are
incorporated herein by reference as if fully set forth herein.
9.9. XxxxxxxxxxxxXX.0.Xxxxxxxxxxxx. The language in all parts
of this Agreement shall in all cases be construed as a whole according to its
fair meaning, strictly neither for nor against any party hereto, and without
implying a presumption that the terms thereof shall be more strictly construed
against one party by reason of the rule of construction that a document is to be
construed more strictly against the person who himself or through his agent
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prepared the same, it being agreed that representatives of both parties have
participated in the preparation hereof.
9.10. Number and Gender. Whenever in this Agreement the
singular is used, it shall include the plural if the context so requires, and
whenever the masculine gender is used in this Agreement, it shall be construed
as if the masculine, feminine or neuter gender, respectively, has been used
where the context so dictates, with the rest of the sentence being construed as
if the grammatical and terminological changes thereby rendered necessary have
been made.
IN WITNESS WHEREOF, Columbia and the Company have caused this
Agreement to be executed by their duly authorized representatives as of the day
and year first written above.
THE TRUSTEES OF COLUMBIA UNIVERSITY
IN THE CITY OF NEW YORK
By /s/ Xxxx X. Xxxxxxxxx
Executive Director, Columbia
Innovation Enterprise
VIMRx GENOMICS, INC.
By /s/ Xxxxxxx X. Xxxxxxx
Xxxxxxx X. Xxxxxxx
President
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RESEARCH AGREEMENT dated March 7, 1997 between THE TRUSTEES OF
COLUMBIA UNIVERSITY IN THE CITY OF NEW YORK and VIMRx
GENOMICS, INC.
EXHIBIT LIST
Exhibit Description
A Research Projects
B Form of Investigator Letter
C Projects in which Commercial
Third Parties Have Rights
D Restrictions and Registration Rights
E Disclosure Memorandum
F Form of License Agreement
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