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EXHIBIT 10.29
LABORATORY SERVICES AGREEMENT
This LABORATORY SERVICES AGREEMENT (the "Agreement") is
entered into by and between Connective Therapeutics, Inc., a Delaware
corporation, its predecessors, successors, subsidiaries, officers, directors,
agents, attorneys, employees and assigns, (hereafter collectively referred to as
the "Company"), on the one hand, and Xx. Xxxxxx X. Xxxxxx ("Xx. Xxxxxx") on
behalf of and to be assigned to a not-for-profit laboratory to be incorporated
by Xx. Xxxxxx within thirty (30) days of the date of this Agreement (hereafter
the "Laboratory"), on the other hand.
WITNESSETH:
WHEREAS, a former officer and employee of the Company, Xx.
Xxxxxx Xxxxxx will establish a laboratory to conduct research activities;
WHEREAS, the Company desires to have Xx. Xxxxxx and the
Laboratory conduct certain directed research activities on behalf of the
Company; and
WHEREAS, the Laboratory is willing to conduct such directed
research activities on behalf of the Company on the terms and conditions herein
set forth.
NOW, THEREFORE, in consideration of the mutual promises
contained herein, and for other good and sufficient consideration, receipt of
which is hereby acknowledged, the parties agree as follows:
1. The Company and the Laboratory agree as follows:
a. The Company shall provide $250,000 to assist in
establishing the Laboratory. Half of such funding shall be provided upon
execution hereof and half shall be provided on the first business day of 1997.
In addition, the Company shall provide a grant of $100,000 per year, paid
quarterly, with the first payment to be made within five (5) days after the date
the Laboratory is first opened for business (the "Establishment Date") with
subsequent payments made on the first day of each of the following quarters to
cover two years of directed research relating to relaxin diagnostics and
therapeutics and TCR peptides for diagnostic and therapeutic applications
covered by existing patents and patent applications owned by or licensed to the
Company (together, the "Connective Field") at the Laboratory, pursuant to the
terms and conditions of a Sponsored Research Agreement to be negotiated in good
faith and consistent with normal business practices between a commercial entity
and a research laboratory. The Company shall also make its own laboratories
available to assist Xx. Xxxxxx as reasonably requested through the period ending
9 months after the first participation of the Company's three FTE's in the
Laboratory, such participation to begin no later than 120 days after the signing
of this Agreement. In addition, the Company shall have the opportunity but not
the obligation to
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provide a matching grant for each foundation and federal grant received by the
Laboratory within the Connective Field during the two-year period.
b. The Company will additionally provide the following during
the nine (9) month period from the Establishment Date (to begin no later than
120 days after the signing of this Agreement:
(1) Company researchers to work as visiting
scientists on research within the Connective Field or research which is funded
by not-for-profit entities, part-time in the Laboratory for such nine (9) month
period. Company researchers shall not work on research funded by for-profit
entities other than the Company, it being understood that such restriction is
not intended to segregate Company researchers from, or preclude interaction and
participation in Laboratory meetings with other Laboratory scientists who are
doing such "for-profit" work. Total employees made available by the Company
would equal 3.0 FTE's to conduct exploratory research (50% time allocation for 6
employees). The remaining 50% of these employees time will be devoted to Company
research.
(2) Laboratory space, including access to Company
equipment. The Company will also provide laboratory support costs to support the
3.0 FTE's to the Laboratory at the level of the Company's own costs therefor
(i.e. $83,800 per FTE per year), which amounts shall be paid quarterly on the
first day of each of the first three calendar quarters following the
Establishment Date, provided that any travel expenses included in such amount
shall be preapproved by the Company.
c. The Laboratory shall conduct the directed research
specified in the Sponsored Research Agreement in good faith and in accordance
with the terms and conditions of that Agreement.
d. Intellectual Property. Intellectual property shall mean
trade secrets and other proprietary information, including any inventions
(whether patentable or not), improvements, processes, patents or applications
for patents.
(1) All intellectual property arising from directed
research projects fully funded by the Company will belong to the Company with no
royalty obligations.
(2) The Company shall have a right of first
negotiation for any other intellectual property developed by the Laboratory
which:
(a) falls within the Connective Field, for
as long as the Company provides funding for directed research projects at a
level of at least $100,000 per year;
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(b) is unrelated to the Connective Field,
but is the result of a directed research project for which at least 50% of the
funding was provided by the Company; and
(c) results from the efforts of any Company
employee working at the Laboratory where non-Company funding has been received
from not-for-profit entities.
In addition, for a period of six (6) months following
the cessation of Company funding for directed research or its reduction below
the level of $100,000 per year, the Company shall continue to have the rights
provided above in Sections 1.d.(1) and 1.d.(2) for any intellectual property
which would, if it had first come into being prior to the cessation of Company
funding for directed research or its reduction below the level of $100,000 per
year, have fallen within the scope of such Sections 1.d.(1) and 1.d.(2) (Except
for Section 1.d.(2)(c) which shall be limited to intellectual property which is
an invention, whether patentable or not including all patent applications and
patents) . After such six (6) month period, to the extent that intellectual
property is developed by the Laboratory, which intellectual property may not be
commercialized without reference to (or a license under) the Company's
intellectual property rights, the Laboratory and the Company shall meet with
respect thereto and determine in good faith whether and the terms under which:
(i) the Laboratory may acquire any license required for further pursuit of such
developments under the Company's rights, or (ii) the Company may acquire a
license for the pursuit of such developments under the Laboratory's rights.
The terms under which such intellectual property
shall be offered to the Company shall be negotiated in good faith consistent
with industry standards for similar technology licenses and taking into account
the extent of the Company's direction and/or contribution thereto.
(3) Intellectual property developed by a
Company employee that results from work done while an employee of the Company on
the Company's time or its premises or any work conducted by such employee within
the Connective Field pursuant to Section 1.b(1), shall belong to the Company
pursuant to agreements already in place. Intellectual property developed by a
Company employee while acting as a visiting scientist to the Laboratory and
outside the Connective Field pursuant to Section 1.b(1), shall be determined
under United States law corresponding to inventorship, as if patent
application(s) corresponding to the intellectual property were filed, as
follows: (A) If sole inventorship, then the party to which the sole inventor is
obligated to assign such patent rights shall be the sole owner of the
Intellectual Property; and (B) if joint inventorship, then the parties to which
the joint inventors are obligated to assign the patent rights shall be the joint
owners of equal, undivided interests in that Intellectual Property. In the event
of a joint invention, both the Company and the Laboratory will promptly enter
into good faith discussions to decide if, when, and how patent application(s)
should be filed, and if filed, how they will be paid for. Either party may
petition the other party to obtain the other
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party's patent rights in the jointly owned invention, in order to obtain
exclusive rights to the joint invention. In the absence of such further
agreement, both parties shall have the right to use, license and/or otherwise
transfer its rights and/or ownership in such jointly owned inventions without
reporting to or accounting to the other party.
The Laboratory shall promptly disclose, and to the extent so
provided for by this Section 1(d), assign to the Company any and all such
intellectual property (including any patent applications), without further
compensation. Any writings prepared by the Laboratory with regard to directed
research shall be for the benefit of the Company. The Company shall have the
right to reproduce, modify, and use such writings and all results generated as
the result of services rendered under this Agreement for any purpose related to
its lawful business. The Laboratory shall promptly make, execute and deliver any
and all instruments and documents and perform any and all acts necessary to
obtain, maintain and enforce patents, trademarks and copyrights for such
Intellectual Property as the Company may desire in any and all countries. All
costs and expenses of application and prosecution of such patents, trademarks
and copyrights shall be paid by the Company.
e. Limited Noncompete. The Laboratory, as a not-for-profit
entity will not compete with the Company in the Connective Field during the
period during which it receives funding from the Company. The Laboratory cannot,
however, be prevented from thereafter entering into research agreements with
parties that may or may not be competitive with the Company, provided the
Laboratory complies with its continuing obligations of confidentiality
hereunder.
2. This Agreement shall bind and benefit the Laboratory and its
successors and assigns; it shall also bind and benefit the Company and its
successors and assigns.
3. That this Agreement shall be deemed to have been entered into in the
State of California and shall be construed and interpreted in accordance with
the laws of that state.
4. That should there hereafter be any litigation between or among any
of the parties to this Agreement alleging a breach of this Agreement or seeking
enforcement of this Agreement, the prevailing party in such litigation shall be
entitled to recover his or its reasonable attorneys' fees and costs of such
litigation from the other party.
5. Arbitration. That any controversy between the parties hereto shall
be submitted to and settled by final and binding arbitration in Santa Xxxxx
County under the Commercial Rules of the American Arbitration Association then
in effect. This includes any controversy involving the construction or
application of any terms or conditions of this Agreement, or any claims arising
out of or relating to this Agreement, or any breach thereof. In any arbitration
pursuant to this section, the award shall be rendered by a majority of the
members of a board of arbitration consisting of three members, one being
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appointed by each party and the third being appointed by mutual agreement of the
two arbitrators appointed by the parties.
6. That during the period of this Agreement it may be necessary for the
Company to disclose certain data and other proprietary information to the
Laboratory and/or to provide the Laboratory with samples, which together with
any information generated by the Laboratory in performing its services for the
Company hereunder (collectively, "Information"), the Laboratory agrees to retain
in strict confidence and not to disclose or transfer to any party other than as
authorized by the Company. The Laboratory further agrees not to use such
Information for any purpose other than those of this Agreement. Upon completion
of the Laboratory's services hereunder, the Laboratory will return all
Information, all copies thereof and any remaining samples to the Company, unless
directed otherwise by the Company. The foregoing obligations of confidentiality
and non-use shall not apply to Information: (a) that was previously known to the
Laboratory as evidenced by its written records; (b) that is lawfully obtained by
the Laboratory from a source independent of the Company; or (c) that is now or
hereafter becomes public knowledge other than through a breach of this
Agreement. These obligations of confidentiality and non-use shall survive the
expiration or termination of this Agreement.
7. The Laboratory agrees to supply the Company with a copy of any
proposed publication or disclosure that incorporates any Information, to be
reviewed for potential proprietary information and intellectual property issues,
and approved in writing by the Company prior to submission for publication or
disclosure (such approval shall not be unreasonably delayed or withheld).
8. No Verbal Modification. This Agreement may only be amended in
writing signed by a duly authorized officer of the Laboratory and the President
of Connective Therapeutics, Inc.
9. Independent Contractor. Notwithstanding anything herein to the
contrary, the Laboratory's status with the Company shall be, at all times during
the term of this Agreement, that of an independent contractor. Nothing in this
Agreement shall be construed to give the Laboratory the power or the authority
to act or make representations for, or on behalf of, or to bind the Company.
10. Effectiveness. This Agreement shall be null and void unless
assigned to and assumed by the Laboratory within thirty (30) days of the date of
this Agreement, and any amounts already paid hereunder shall be promptly
refunded. With the sole exception of the foregoing assignment, this Agreement
will be personal to the Laboratory, and the Laboratory shall therefore have no
right or authority to assign this Agreement or any portion thereof, to sublet or
subcontract in whole or in part, or otherwise delegate the performance under
this Agreement, without the prior written consent of the Company.
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11. Entire Agreement. This Agreement represents the entire agreement
and understanding between the Company and the Laboratory and supersedes and
replaces any and all prior agreements and understandings to the extent they may
be inconsistent herewith. This Agreement is being entered into in conjunction
with an Agreement effective as of October 31, 1996 between the Company and Xx.
Xxxxxx.
IN WITNESS WHEREOF, the parties have each executed this
Agreement as of the date(s) set forth below:
Dated: ______________________, 1996 ____________________________________
Xx. Xxxxxx Xxxxxx, on behalf of the
Laboratory
CONNECTIVE THERAPEUTICS, INC.
Dated: ______________________, 1996 ____________________________________
Xxxxxx X. Xxxxxxx, President and
Chief Executive Officer
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