RESEARCH AGREEMENT BETWEEN OREGON HEALTH &SCIENCE UNIVERSITY AND ZNOMICS, INC.
RESEARCH
AGREEMENT
BETWEEN
OREGON
HEALTH &SCIENCE UNIVERSITY AND ZNOMICS, INC.
This
Agreement (“AGREEMENT”),
dated and effective as of July 1, 2008 (the “Effective
Date”), is between the Oregon Health and Science University, having
offices at 0000 XX 0xx Xxx,
Xxxxx 000 Xxxxxxxx, Xxxxxx 00000-0000 (“UNIVERSITY”), and Znomics, Inc., having
offices at 0000 XX 0xx Xxx.,
Xxxxx 000 Xxxxxxxx, Xxxxxx 00000 (“SPONSOR”).
|
1.
|
BACKGROUND
|
|
1.1
|
SPONSOR
desires research in accordance with the scope of work outlined per
Attachment A, and
|
|
1.2
|
The
performance of such research is consistent, compatible, and beneficial to
the academic role and mission of UNIVERSITY as an institution of higher
education;
|
|
1.3
|
UNIVERSITY
is qualified to provide such research services;
and
|
|
1.4
|
As
a benefit of funding such research, UNIVERSITY is willing to grant to
SPONSOR an exclusive option to license inventions made during the course
of such research in accordance with Section 13
below.
|
NOW,
THEREFORE, for and in consideration of the mutual covenants, conditions and
undertakings herein set forth, the parties agree as follows:
|
2.
|
SCOPE
OF WORK
|
|
2.1
|
UNIVERSITY
agrees to use all reasonable best efforts to perform for SPONSOR the
research activities (“RESEARCH”) described in Attachment A, hereinafter
the SCOPE OF WORK, under the direction and supervision of Xx. Xxxxxx
Xxxxxxx, PRINCIPAL INVESTIGATOR. The Scope of Work may be modified from
time to time by mutual Agreement of the PRINCIPAL INVESTIGATOR, UNIVERSITY
and SPONSOR.
|
|
2.2
|
UNIVERSITY
will use all reasonable best efforts to ensure that the PRINCIPAL
INVESTIGATOR and other personnel assisting in the RESEARCH will keep
accurate financial and scientific records relating to the RESEARCH and
will make such records available to SPONSOR or SPONSOR’S authorized
representative throughout the term of this Agreement during normal
business hours upon reasonable notice. It is understood that such records
shall include detailed, witnessed laboratory notebooks sufficient to
document any inventions made in the course of the RESEARCH. Upon request
by SPONSOR, in whatever condition maintained by the PRINCIPAL INVESTIGATOR
and his staff. Any such records, materials and copies made available to
SPONSOR or SPONSOR’s authorized representative shall be held in confidence
by SPONSOR.
|
|
2.3
|
SPONSOR
understands that UNIVERSITY may be involved in similar research through
faculty other than PRINCIPAL INVESTIGATOR, on behalf of itself and others.
UNIVERSITY shall be free to continue such similar research, provided that
such research is conducted separate from the RESEARCH by investigators
other than the PRINCIPAL INVESTIGATOR, or by investigators who are not
under the supervision of the PRINCIPAL INVESTIGATOR and who are not
participating in the RESEARCH. UNIVERSITY shall not, during the term of
this Agreement, enter into any agreement with any other commercial party
for support of work by the PRINCIPAL INVESTIGATOR relating to the
RESEARCH; provided, however, it is understood that UNIVERSITY and
PRINCIPAL INVESTIGATOR may accept funding for
research
|
relating
to the RESEARCH from the U.S. Government and non-profit sources so long as
UNIVERSTIY does not grant any rights that conflict with the rights of SPONSOR
under Section 13 below.
3. TERM
3.1 This
AGREEMENT shall be effective for a period of twelve (12) months unless mutually
agreed upon in writing between the parties or terminated early in accordance
with Section 15 below.
4. COMPENSATION
|
4.1
|
OREGON
HEALTH & SCIENCE UNIVERSITY
Sponsored
Projects Administration
0000 XX
0xx
Xxxxxx, Xxxxx 000
Xxxxxxxx,
XX 00000
Tax ID
No.:00-0000000
|
5.
|
REPORTING
REQUIREMENTS
|
|
5.1
|
UNIVERSITY
will provide reports on the progress of the RESEARCH as outlined or
required in the SCOPE OF WORK. A final written report shall be furnished
to SPONSOR upon completion of the RESEARCH within 60 days of the last day
of the project period and after the final payment has been
received.
|
|
6.
|
TECHNICAL
SUPERVISION
|
|
6.1
|
The
person with primary responsibility for supervision of the performance of
the RESEARCH on behalf the SPONSOR shall be Xx. Xxxxx Xxxxxx, or such
other person as may be designated by SPONSOR, who shall have primary
responsibility for technical supervision of the
Project.
|
|
6.2
|
The
person with primary responsibility for supervision of the performance of
the RESEARCH on behalf of UNVIERSITY shall be the PRINCIPAL INVESTIGATOR.
No other person shall replace or substitute for him/her in the supervisory
responsibilities hereunder without the prior written approval of both
UNIVERSITY and SPONSOR, which may be granted or withheld at each party’s
sole discretion.
|
|
7.
|
CONFIDENTIALITY
AND PUBLICATION
|
|
7.1
|
UNIVERSITY
and PRINCIPAL INVESTIGATOR agree to keep confidential and SPONSOR
confidential and proprietary information supplied to it in writing by
SPONSOR and marked CONFIDENTIAL during the course of research performed by
UNVERSITY (Confidential Information). This obligation extends for a period
of five (5) years after the term of this AGREEMENT. Such Confidential
Information will not be included in any published material without prior
approval by SPONSOR. The obligations of this Section shall not apply
to:
|
|
(a)
|
Information
which is or becomes known publicly through no fault of the UNIVERSITY or
PRINCIPAL INVESTIGATOR;
|
|
(b)
|
Information
learned by UNIVERSITY or PRINCIPAL INVESTIGATOR through a third party
entitled to disclose it;
|
|
(c)
|
Information
developed by UNIVERSITY or PRINCIPAL INVESTIGATOR independently of
information obtained from SPONSOR as shown by written
records;
|
|
(d)
|
Information
already known to UNIVERSITY or PRINCIPAL INVESTIGATOR before SPONSOR’s
disclosure as shown by witnessed prior written records;
or
|
|
(e)
|
Information
required to be disclosed to by law, including the Oregon Public Records
Law, to comply with government regulation, subpoenas or court orders
provided SPONSOR receives adequate notice of such demand and provided
UNIVERSITY or PRINCIPAL INVESTIGATOR makes any such disclosure under an
order protecting the confidential nature of proprietary
information.
|
|
7.2
|
UNIVERSITY
agrees to provide any proposed publication to SPONSOR forty-five (45) days
prior to submission, for confidential review for the inclusion of SPONSOR
Confidential Information, and to determine whether patentable inventions
of discoveries are disclosed therein. SPONSOR has the right to edit or
remove SPONSOR Confidential Information, prior to submission for
publication. Should the documents contain any patentable information at
SPONSOR’s request UNIVERSITY shall withhold submission and/or publication
for an additional forty-five (45) days to allow U.S. patent filings. In
addition, in the event that the document includes data, information or
material generated by SPONSOR’s scientists, and professional standards for
authorship would be consistent with including SPONSOR’s scientists as
co-authors of the document, the names of SPONSOR’s scientists will be
included as co-authors.
|
|
8.
|
EQUIPMENT;
MATERIAL TRANSFER
|
|
8.1
|
All
equipment purchased under the terms of this AGREEMENT becomes the property
of UNIVERSITY unless otherwise specified herein. In order for each party
to conduct its activities and research related to the research, the
parties may transfer to each other certain biological materials from time
to time during the RESEARCH as set forth in Attachment A. In the case of
the UNIVERSITY transfer of materials to SPONSOR, SPONSOR agrees that all
materials obtained from UNIVERSITY shall be used solely for the purpose of
conducting RESEARCH and any intellectual property arising from SPONSOR’s
activities shall be subject to the terms of this agreement, including,
without limitation the Option provisions set forth in Section
13.
|
|
9.
|
INDEMNIFICATION
|
|
9.1
|
Each
party hereto agrees to be responsible and assume liability for its own
wrongful or negligent acts or omissions, or those of its officers, agents
or employees to the full extent required by law, including the Oregon Tort
Claims, ORS Sections 30.260 through
30.300.
|
|
10.
|
COMPLIANCE
WITH LAWS
|
|
10.1
|
UNIVERSITY
and PRINCIPAL INVESTIGATOR agree to comply with all applicable federal,
state and local laws, codes, regulations, rules and
orders.
|
|
11.
|
ASSIGNMENT
|
|
11.1
|
Neither
party shall assign or transfer any interest in this AGREEMENT, nor assign
any claims for money due for to become due during this AGREEMENT, without
the prior written approval of the other party, provided that, SPONSOR may
assign this Agreement in connection with the sale or transfer of
substantially all the assets to which this Agreement relates in which case
SPONSOR
|
shall notify
UNIVERSITY of such assignment.
|
12.
|
PATENTS
AND INVENTIONS
|
|
12.1
|
UNIVERSITY
agrees to take appropriate steps to cause all personnel assigned to the
RESEARCH to disclose any and all inventions and improvements conceived or
reduced to practice by any of such personnel in the performance of the
RESEARCH and relating to the subject matter thereof (Inventions). Within
thirty (30) days of receiving a written inventions disclosure, UNIVERSITY
will provide SPONSOR with a copy of the disclosure. UNIVERSITY shall
retain all right, title, and interest in and to such inventions and
improvements and all patent applications therefore which it may file at
its election. Additionally, SPONSOR shall promptly disclose to UNIVERSITY
in writing any invention of which it may become aware in the performance
of the RESEARCH, including any derivatives developed by SPONSOR which are
based upon compounds or compound structures transferred by UNVERSITY to
SPONSOR.
|
|
(a)
|
Inventorship
will be determined in accordance with applicable U.S. patent laws
regarding inventorship. Any Invention conceived and reduced to practice:
(i) solely by UNVERSITY’s personnel shall be owned by UNVERSITY
(“UNIVERSITY Inventions”); (ii) jointly by UNVERSITY’s and SPONSOR’s
personnel shall by jointly owned by UNVERSITY and SPONSOR (“Joint
Inventions”).
|
|
(b)
|
UNIVERSITY
shall be responsible for preparing, filing, prosecuting and maintaining
patent applications for UNIVERSITY Inventions. SPONSOR shall be
responsible for preparing, filing, prosecuting and maintaining patent
applications for Joint Inventions. Prior to filing a patent application or
filing or responding to any outstanding communication in connection with a
patent application directed to an Invention as defined herein, the filing
party will provide the other with thirty (30)days notice to review and
provide comment thereon.
|
|
(c)
|
UNVERSITY
shall obtain appropriate written agreements from all personnel involved in
the RESEARCH on UNIVERSITY’s behalf, including without limitation the
PRINCIPAL INVESTIGATOR, such agreements shall require that all discoveries
and inventions first conceived or reduced to practice using UNIVERSITY’s
facilities, personnel, information or other resources shall be reported
promptly and assigned to UNVERSITY, PRINCIPAL INVESTIGATOR and other
UNIVERSITY faculty, staff and students performing the RESEARCH, agree that
they will not collaborate with others not employed by UNVERSITY (other
than SPONSOR) in performing the RESEARCH, without SPONSOR’s prior written
consent.
|
|
13.
|
LICENSE
|
|
13.1
|
UNIVERSITY
hereby grants SPONSOR an exclusive option (hereafter the “Option”) to
negotiate an exclusive worldwide license for UNIVERSITY’s right in
UNIVERSITY Invention(s) or Joint Invention(s). SPONSOR may exercise this
Option at any time on or prior to sixty (60) days from disclosure of the
Invention to SPONSOR (the “Option
Period”).
|
|
13.2
|
The
parties shall have one hundred fifty (150) days (which period of time
shall be extendible upon mutual agreement of the parties) from the date
SPONSOR elects to negotiate for terms for an exclusive license to conclude
a licensing agreement (the “LICENSE AGREEMENT”). Attached as Exhibit C is
a non-binding term sheet which the parties agree represents a reasonable
example of financial terms for compounds in an early stage of development.
The parties shall use their good faith efforts to consider similar
financial terms in the License Agreement. SPONSOR shall pay all patent
costs for UNVERSITY Inventions during the one hundred fifty (150) day
negotiation period, or any extension thereof. If at the end of such one
hundred fifty (150) day
|
period or any
extension thereof, the parties are unable to agree upon licensing terms, SPONSOR
shall have no further obligation to pay patent costs for the UNIVERSITY
Invention(s) for which negotiations have terminated. If SPONSOR terminates the
negotiation in writing prior to the end of the one hundred fifty (150) day
negotiation period, SPONSOR shall have no further obligation to pay patent costs
incurred after the termination date. In the even SPONSOR does not exercise its
Option rights or SPONSOR and UNVERSITY are unable to agree to
mutually acceptable licensing terms, UNIVERSITY has the right to license its
rights to a third party on terms no more favorable than those set forth on
Appendix C for a period of eighteen (18) months. Thereafter, UNIVERSITY may
license its rights in any Invention to a third party without further obligation
to SPONSOR. UNIVERSITY shall not abandon its rights to any such Invention prior
to exercise of said Option or expiration of the Option Period.
|
14.
|
PUBLICITY
|
|
14.1
|
SPONSOR
will not include the name of the UNIVERSITY in any advertising, sales,
promotion, or other publicity matter without prior written approval of
UNIVERSITY. Provided however that SPONSOR shall be permitted to issue a
press release describing the general nature of the collaboration with
UNIVERSITY which is substantially similar to the draft press release in
Appendix B.
|
|
15.
|
TERMINATION
|
|
15.1
|
Either
party may terminate this AGREEMENT at any time
if:
|
|
|
(a)
|
The
other party materially breaches the terms of this AGREEMENT, provided that
the non-breaching party shall have given the breaching party written
notice of such breach and the breaching party shall have failed to cure
the same within thirty (30) days after receipt of such
notice.
|
|
|
(b)
|
The
loss or departure of PRINCIPAL INVESTIGATOR, and a mutually acceptable
replacement cannot be found within sixty (60) days of PRINCIPAL
INVESTIGATOR’s loss or departure.
|
|
|
(c)
|
Performance
of any part of this AGREEMENT by a party is prevented or delayed by reason
of Force Majeure and cannot be overcome by reasonable diligence to the
satisfaction of either party.
|
|
(d)
|
The
other party cease, discontinues or indefinitely suspends its business
activities related to the services to be provided under this AGREEMENT, or
the other party voluntarily or involuntarily files for
bankruptcy.
|
|
(e)
|
The
party has given ninety (90) days notice to the other
party.
|
|
15.2
|
The
party requesting termination will provide the other party with written
notice specifying both the reason and the effective date of termination.
Upon the giving of such notice of termination by either party, the
UNIVERSITY will use its reasonable best efforts to limit or terminate any
outstanding commitments. .
|
|
15.3
|
Upon
termination, UNIVERSITY shall deliver to SPONSOR in the state they exist
as of the date of termination of all work product, and Confidential
Information belonging to SPONSOR. SPONSOR shall within thirty (30) days
after termination pay UNIVERSITY all payments due as of the effective date
of the termination.
|
|
16.
|
NOTICES
|
|
16.1
|
All
notices or communications given hereunder shall be in writing and shall be
delivered by hand, or by overnight courier by facsimile with confirmation
by mail, with
|
all
delivery charges prepaid and addressed to the parties as
follows:
|
|
TO
SPONSOR:
|
Xx.
Xxxxxxx Xxxxxxxx
0000
XX 0xx
Xxx, Xxxxx 000 Xxxxxxxx,
Xxxxxx
00000-0000
|
|
TO
UNIVERSITY:
|
Director,
Technology & Research Collaborations
Oregon
Health & Science University, AD120
0000
XX Xxxxx Xxxxxx, Xxxxx 000
Xxxxxxxx,
XX 00000-0000
Telephone:
000-000-0000
Facsimile: 000-000-0000
with
copy
|
|
TO
PRINCIPAL INVESTIGATOR:
|
Xx.
Xxxxxx Xxxxxxx
Professor,
Physiology and Pharmacology
Oregon
Health & Science University
0000
XX Xxx Xxxxxxx Xxxx Xxxx, X000
Xxxxxxxx,
XX 00000-0000
Telephone:
000-000-0000
Facsimile: 000-000-0000
|
|
17.
|
DISPUTE
RESOLUTION AND GOVERNING LAW
|
|
17.1
|
The
Parties agree to attempt to settle amicably any controversy or claim
arising under this AGREEMENT or a beach of this AGREEMENT. Thereafter,
both parties agree that all disputes between them arising out of or
relating to this AGREEMENT, will be submitted to non-binding mediation
unless the parties mutually agree otherwise. All parties agree to exercise
their best effort in good faith to resolve all disputes in
mediation.
|
|
17.2
|
This
AGREEMENT will be governed by and construed in accordance with the laws of
the State of Oregon without reference to its choice of law provisions, the
International Convention on the Sale of Goods or any other international
treaty. Any claim, action or suit between OHSU and SPONSOR that arises out
of or relates to performance of this AGREEMENT will be brought and
conducted solely and exclusively within the Circuit Court for Multnomah
County, Oregon. However, if any such claim, action or suit may be brought
only in a federal forum, it will be brought and conducted solely and
exclusively within the United States District Court of
Oregon.
|
|
18.
|
CHANGES
AND AMENDMENTS
|
|
18.1
|
THIS
AGREEMENT CONSTITUES THE ENTIRE AGREEMENT BETWEEN THE PARTIES. THERE ARE
NO UNDERSTANDINGS, AGREEMENTS, OR REPRESENTATIONS, ORAL OR WRITTEN, NOT
SPECIFIED HEREIN REGARDING THIS AGREEMENT. NO AMENDMENT, CONSENT, OR
WAIVER OR TERMS OF THIS AGREEMENT SHALL BIND EITHER PARTY UNLESS IN
WRITING AND SIGNED BY ALL PARTIES. ANY SUCH AMENDMENT, CONSENT, OR WAIVER
SHALL BE
|
EFFECTIVE ONLY
IN THE SPECIFIC INSTANCE AND FOR THE SPECIFIC PURPOSE GIVEN. SPONSOR, BY THE
SIGNATURE BELOW OF ITS AUTHORIZED REPRESENTATIVE, ACKNOWLEDGES HAVING READ AND
UNDERSTOOD THE AGREEMENT AND SPONSOR AGREES TO BE BOUND BY ITS TERMS AND
CONDITIONS.
In
Witness Whereof, the parties hereto have caused this AGREEMENT to be executed as
of the date set forth herein by their duly authorized
representatives.
|
OREGON
HEALTH & SCIENCE UNIVERSITY
By:
____________________________________
Xxxxxxxx
X. Xxxxxxx,
Director Date
Technology
& Research Collaborations
|
SPONSOR
By:
____________________________________
Name:
Date
Title:
|
Acknowledged
By: _____________________________________
PRINCIPAL
INVESTIGATOR Date
Attachment
A: Scope of Work/Budget
I.
Project
OHSU and
Znomics, Inc. (“Znomics”) will enter into a collaborative research agreement
with the laboratory of Xx. Xxxxxx Xxxxxxx of OHSU (“Xxxxxxx lab”) to synthesize
and test small molecules that may be useful in the treatment of human disease
conditions involving chronic inflammation such as rheumatoid arthritis, asthma,
and inflammatory bowel syndrome.
II.
Work Plan
The
Xxxxxxx lab will synthesize small molecules based on an aryl-pyrazole backbone
as non-steroidal dissociating glucocorticoids. Znomics will work in
collaboration with Xx. Xxxxxxx to develop these compounds by characterizing
their efficacy and side effect profiles. The Xxxxxxx lab and Znomics will
exchange research data and frequent progress updates.
The
Xxxxxxx lab will provide the following deliverables and research
services:
|
1)
|
Xx.
Xxxxxxx will design novel non-steroidal dissociating glucocorticoids based
on an aryl-pyrazole backbone.
|
|
2)
|
The
Xxxxxxx lab will synthesize compounds as mutually agreed by the parties,
anticipating two new synthetic routes will be explored to produce an
initial panel of 15-30 analogs that carry an array of different steric and
electronic substituted anilines, followed by an additional 15-30 compounds
in a lead optimization program.
|
|
3)
|
The
structures of newly synthesized compounds will be validated by mass
spectrometry in the Xxxxxxx lab.
|
|
4)
|
The
Xxxxxxx lab will determine the binding affinity of synthesized compounds
for the glucocorticoid and other receptors as mutually agreed by the
parties.
|
|
5)
|
The
compound structures will be transmitted to Znomics by the Xxxxxxx lab for
further development in consultation with Xx. Xxxxxxx. Any and all
derivatives of such compounds and compound structures developed by Znomics
shall fall under the terms of the attached collaborative research
agreement.
|
|
6)
|
The
Xxxxxxx lab will transfer compounds to Znomics for efficacy testing in
rodent and zebrafish models.
|
III.
Effort
Xx.
Xxxxxxx will allocate the following effort to accomplish the deliverables
described in section II above:
|
1)
|
Xx.
Xxxxxxx at 10% effort for supervision and management of
project.
|
|
2)
|
One
(1) FTE at the postdoctoral level supervised by Xx.
Xxxxxxx.
|
IV.
Timing/Payments
Xx.
Xxxxxxx will accomplish the deliverables in Section II above with the personnel
and supplies outlined in section III above in 6-12 months of the effective date.
All payments will be made quarterly and will be due within thirty (30) days of
the end of each quarter.
V.
Research Budget
First
year budget:
Salaries & benefits
|
X.
Xxxxxxx
|
10% |
$20,000
|
|
Postdoc
|
100% |
40,000
|
|
Supplies
|
15,000
|
|
| Total Direct Costs |
75,000
|
|
|
MTDC 54%
|
40,500
|
|
|
Total
|
115,500
|
Attachment
B: Draft Press Release
Xxxxxxx
Program Draft PR- 7/1/08
Znomics
and Leading Chemist at Oregon Health & Science University Launch Drug
Discovery Program for Treatment of Inflammatory Diseases Without Steroidal Side
Effects
Company
Funds Laboratory of Xxxxxxxxx Xxxxxx Xxxxxxx, Ph.D.; Acquires Exclusive Option
to License Small Molecule Compounds from the Discovery Program
Portland,
Ore., July__, 2008 (PrimeNewswire via COMTEX News Network)- Znomics, Inc.
(OTCBB:ZNOM), a pioneer in the development of the zebrafish as a vertebrate
genetic platform to accelerate drug discovery, announced today a collaborative
research program with Oregon Health & Science University (OHSU) and Xxxxxx
Xxxxxxx, Ph.D., Directors of its Chemical Biology Program, to design and develop
pre-clinical compounds to treat diseases such as rheumatoid arthritis, asthma
and inflammatory bowel syndrome.
“This is
an important new therapeutic program for Znomics,” said Xxxxxxx Xxxxxxxx, Chief
Executive Officer. “Xx. Xxxxxxx has a proven record of designing new compounds
that have progressed from the university setting into commercial development and
clinical studies. We’re extremely pleased to have a research chemist of Tom’s
caliber collaborating with us.”
Under the
research agreement, Znomics will fund the program and shall have the option to
exclusively license the rights to the discoveries. Xx. Xxxxxxx, a professor of
physiology and pharmacology at OHSU, has done leading work in biological
research and small molecule discovery in “dissociating glucocorticoid” compounds
that retain the desired anti-inflammatory action but without having the serious
side effects of steroids. His work has been recognized by the American Chemical
Society which awarded him the prestigious Xxxxxx X. Xxxx Scholar Award in July
2007. Prior to his appointment at OHSU, Xx. Xxxxxxx was a faculty member of the
University of California, San Francisco. He has been a member of Znomics’
Scientific Advisory Board since December 2007.
“I’m
excited about this project and about having Xxx more involved with Znomics,”
said Xxxxx Xxxxxx, Chief Scientific Officer. “The factors involved in
glucocorticoid activity represent the kind of complex biology--involving
different side effects on multiple genes and organs--where our zebrafish whole
animal approach can make a difference in successful drug
discovery.”
“Having
the talented Znomics group nearby for this project will be just great,” said Xx.
Xxxxxxx. “Nothing would please me more than to find a drug that could lead to
improved long term treatment for patients suffering from debilitating
inflammation-related diseases, which is a large unmet medical
need.”
//About
Znomics//
//Forward
Looking Statements//
//Release
contact info, etc.//
Attachment
C: Non-Binding example of reasonable market terms for an exclusive license
for
compounds
that have a) composition of matter claims b) have preliminary in vitro date, and
c) may
have
some preliminary in-vivo data.
This
Term sheet is for illustration purposes only and is non-binding to the
parties.
|
Financial
|
|
|
Option
Exercise
|
Within
thirty (30) days of execution of an exclusive license, ZNOMICS shall pay
OHSU a one-time non-refundable fee of $75,000
|
|
Milestones
|
The
following milestone payments shall be paid by ZNOMICS to OHSU once the
first time such milestone is reached for a Licensed Product:
|
|
Issuance
of US patent - $75,000
|
|
|
Issuance
of EU patent - $75,000
|
|
|
Initiation
of first phase I trial - $100,000
|
|
|
Initiation
of first phase II trial - $150,000
|
|
|
Initiation
of first phase III trial - $200,000
|
|
|
First
sale - $250,000
|
|
|
Maintenance
Fee
|
ZNOMICS
shall pay an annual maintenance fee of $5,000 on each anniversary of the
effective date of the license agreement.
|
|
Royalty
|
ZNOMICS
will pay OHSU 1-2% of net sales of Licensed Product, the specific rate to
be negotiated with the definitive license agreement. The royalty rate will
be reduced for payments made for third party IP required for freedom to
operate, with a floor at 1%.
In
the event of a sublicense, the ZNOMICS will pay OHSU 10% of the royalty
received from its sublicense. In the event that the Licensed Product is
sold in combination with other products or services that are not
separately covered by a valid claim within the Licensed Patents, the net
sales from the Licensed Product will be reasonably allocated between such
Licensed Product and such other product or compound based upon the
individual fair market values of the Licensed Product and such other
product or component.
|
|
Sublicensing
|
ZNOMICS
shall pay to OHSU a percentage of the Sublicense Consideration (all
upfront milestone payments and other consideration received by ZNOMICS
from a bone fide sublicensee, but specifically excluding any
reimbursements received for ZNOMIC’s R&D expenses associated with the
Licensed Products) it receives from its sublicensee according to the
following schedule:
· 40%
of all Sublicense Consideration received by ZNOMICS within first year
after Effective Date of the license agreement
· 20%
of all Sublicense Consideration received by ZNOMICS within second year
after Effective Date of the license agreement
· 10%
of all Sublicense Consideration received by ZNOMICS
thereafter
|
|
Provided
that the percentage of Sublicensing Consideration paid to OHSU shall be
reduced by 50% when, in addition to the patents licensed from OHSU,
ZNOMICS also sublicenses additional patents or patent applications owned
or controlled by ZNOMICS (other than OHSU licensed IP) which are required
by the sublicensee for freedom to operate and the sale of products covered
by the patents licensed to ZNOMICS by
OHSU
|
