Exhibit 10.15
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MATERIAL TRANSFER AGREEMENT
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(SCHERING RECEIPT)
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THIS MATERIAL TRANSFER AGREEMENT ("Agreement") is made as of this 31st day
of , , ("Effective Date"), by and between SCHERING-PLOUGH ANIMAL HEALTH
CORPORATION (hereinafter, referred to as "Schering"), a Delaware corporation,
having its principal office located at 0000 Xxxxxx Xxxxxx, Xxxxx, Xxx Xxxxxx
00000, and (hereinafter, referred to as "Supplier"), , having its principal
office located at .
WITNESSETH:
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WHEREAS, Schering and Supplier desire to contract for the exchange of the
Information (as hereinafter defined) relating to the Material (as hereinafter
defined) on the terms and conditions set forth herein.
NOW, THEREFORE, in consideration of the premises and the mutual agreements
and covenants set forth in this Agreement, Schering and Supplier hereby agree as
follows:
1. Definitions. For purposes of this Agreement, the following terms shall
have the following meanings (such meanings to be equally applicable to both
the singular and plural forms of the terms defined):
1.01 "Agents" shall mean any officer, director, employee, and agent of
a Party.
1.02 "Commercial Purpose" shall mean (a) the sale, lease, license, or
other transfer of the Material or Modifications or (b) use of the
Material or Modifications by any Person, including Schering to (i)
perform contract research, (ii) screen compound libraries, (iii)
produce or manufacture products for general sale; or (iv) conduct
research activities that result in any sale, lease, license, or
transfer of the Material or Modifications.
1.03 "Developments" shall mean all ideas, concepts, discoveries,
inventions, developments, know-how, trade secrets, techniques,
methodologies, modifications, innovations, improvements, writings,
documentation, data and rights (whether or not protectable under
state, federal, or foreign patent, trademark, copyright or similar
laws), incorporating or requiring the use of the Material, that are
discovered, developed, created, conceived, or reduced to practice by
Schering, independently or in conjunction with any Person, during the
term of this Agreement, including, without limitation, New Substances
and New Uses.
1.04 "Effective Date" shall have the meaning set forth in the
introductory paragraph to this Agreement.
1.05 "Field" shall mean the veterinary field, including, without
limitation, any and all applications for non-human animals.
1.06 "Findings" shall mean any observations, studies, conclusions, or
Results arising out of Schering's evaluation of the Material.
1.07 "Information" shall mean all tangible and intangible information,
including, without limitation, technical, financial, commercial and
proprietary information, know-how, and trade secrets of any
description, whether created or produced by Schering, Supplier, or any
Person on behalf of Schering and/or Supplier, that concerns or relates
to the Material or is otherwise acquired in anticipation of, during,
or as a result of, or in any way connected with, this Agreement, and
(a) if disclosed in writing, graphically, or by any means or way of
sample or specimen, is marked "Confidential" when disclosed, or (b) if
disclosed orally, is reduced to writing within thirty (30) days from
the date of such oral disclosure and is marked "Confidential."
1.08 "Material" shall mean the eukaryotic expression vector with the
HSP70 gene running off a B-actin promoter, with the usual antibiotic
resistance inserts for cloning purposes (ampicillin and geneticin
resistance), resulting in an HSP70 increase in Schering's Vero cells
of about 4-16x over normal levels, and any Progeny and Unmodified
Derivatives (including, without limitation, expression products,
subclones, sub-units or fractionations).
1.09 "Modifications" shall mean any substances created by Schering
which contain or incorporate the Material or derived by chemical
modification of the Material.
1.10 "New Substance" shall mean any material first produced or
isolated by Schering with or by the use of the Material.
1.11 "New Use" shall mean any new use of the Material, including,
without limitation, new therapeutic uses or methods of treatment
discovered by Schering.
1.12 "Party" shall mean Schering or Supplier; "Parties" shall mean
Schering and Supplier.
1.13 "Patent Rights" shall mean the following patents and patent
applications: (a) Patent No. US 6,495,360 B1 (issued December 17,
2002), (b) Patent No. US 6,451,597 B2 (issued September 17, 2002), (c)
Patent No. US 6,541,233 B2 (issued April 1, 2003), and (d) Patent No.
US 6,468,777 B2 (issued October 22, 2002), including all foreign
counterparts thereof, and any and all divisions, continuations,
continuation-in-part, patents of addition, reissues, renewals,
extensions, registrations, confirmations, re-examinations, any
provisional applications, supplementary protection certificates, or
the like, of any such patents, patent applications and foreign
equivalents thereof, which, during the term of this Agreement, are
owned by Supplier or to which Supplier, through license or otherwise,
has or acquires rights.
1.14 "Person" shall mean (a) any corporation, partnership, joint
venture, joint stock company, association, trust, business trust,
estate, unincorporated organization, or other business entity, (b) any
government or agency, division or subdivision thereof, or (c) any
individual.
1.15 "Progeny" shall mean an unmodified descendent generated from the
Material, such as a virus, cell from cell, or organism from organism.
1.16 "Purpose" shall have the meaning set forth in Section 2 hereof.
1.17 "Results" shall mean any and all results, know-how, Findings, and
knowledge related to the Material achieved or obtained by or on behalf
of Schering.
1.18 "Territory" shall mean all of the countries in the world.
1.19 "Unmodified Derivative" shall mean any substance created by the
Supplier which constitutes an unmodified functional subunit or product
expressed by or generated from the original Material, including, but
not limited to, subclones of unmodified cell lines, purified or
fractionated subsets of the original Material, proteins expressed by
DNA/RNA supplied by Supplier, or monoclonal antibodies secreted by a
hybridoma cell lines.
2. Scope. During the term of this Agreement, Schering shall have the
right to use the Material in accordance with the terms and conditions of
this Agreement for the sole and limited purpose of evaluating the Material
and determining if the Material may be used for Commercial Purposes or any
other purpose agreed to by the Parties ("Purpose"). Within a period of
thirty (30) days from the completion of the Purpose, Schering shall notify
Supplier in writing of its intention to use the Material for Commercial
Purposes, and the Parties agree to enter into a license agreement, under
which Supplier shall grant to Schering an exclusive license (with right to
grant sublicenses) to develop the Material under the Patent Rights for
Commercial Purposes in the Field within the Territory. Such license
agreement shall include, without limitation, the milestone payments set
forth on Exhibit A hereof.
3. Obligations of Schering.
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3.01 During the term of this Agreement and for a period of five (5)
years from the date of expiration or termination of this Agreement,
Schering shall: (a) protect and hold in confidence the Information of
Supplier; (b) not disclose or use, or cause to be disclosed or used,
such Information to or by any Person except with the prior written
consent of Supplier and in accordance with this Agreement; (c) handle,
preserve, and protect such Information with at least the same degree
of care Schering affords its own confidential information; and (d) use
diligent efforts to ensure that each of its Agents preserves and
protects the confidentiality of such Information.
3.02 Schering's duty of confidentiality under this Section 3 shall not
apply to any Information of Supplier that:
(a) was demonstrably known to Schering prior to the date such
Information was disclosed by Supplier;
(b) was known or available generally to the public prior to the
date such Information was disclosed by Supplier;
(c) becomes known or available generally to the public,
subsequent to the date such Information was disclosed by
Supplier, through no act of Schering in violation of this
Agreement;
(d) is or was disclosed by Supplier to any Person without an
obligation to maintain confidentiality;
(e) is or was developed independently by Schering or its Agents
without any breach of this Agreement;
(f) is received by Schering from a Person and is not subject to
any obligation of confidentiality owed by such Person to
Supplier; or
(g) subject to Section 3.04 hereof, is required to be disclosed
by Schering pursuant to any applicable law or judicial or
governmental order.
3.03 Failure by Schering to disclose the existence of any of the
conditions set forth in Section 3.02 hereof shall not be deemed a
representation that such conditions do not exist or that such
conditions have been waived.
3.04 Schering shall notify Supplier of receipt of any process,
subpoena, demand, or request by any Person to disclose Information of
Supplier, and shall, as soon as practicable but in no event later than
five (5) business days from the date of such receipt, furnish to
Supplier a copy of such process, subpoena, demand, or request and
inform Supplier of the circumstances relating thereto. Schering shall,
at its cost and expense, take all reasonable steps to maintain and
protect the confidentiality of the Information of Supplier; provided,
however, that nothing in this Agreement shall be deemed to require
Schering to violate any law or court order. Supplier also shall have
the right to take any legal action to prevent disclosure of its
Information, including, without limitation, the right to appear on
behalf of Schering, to represent Schering, and to employ counsel of
its choice for these purposes. If Supplier elects to exercise its
rights under this Section 3.04, it shall do so at its cost and expense
and shall hold harmless, defend, and indemnify Schering from and
against any and all legal responsibility or liability from the
exercise of these rights. If Supplier elects not to exercise any such
rights or Schering is nonetheless legally compelled to disclose the
Information of Supplier, then Schering may, without liability under
this Agreement, disclose only that portion of such Information that it
is legally compelled to disclose and shall furnish to Supplier a copy
of the Information disclosed and all correspondence and communications
relating to such disclosure.
3.05 Except as provided in Sections 3.02 and 3.04 hereof, Schering
shall: (a) limit disclosure of any Information received by it under
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this Agreement to only those of its Agents who are directly involved
in the evaluation of the Information; (b) upon such disclosure, advise
such Agents of the proprietary nature of such Information; and (c)
subject to Section 3.06 hereof, be responsible for any breach of this
Agreement by its Agents.
3.06 Schering shall, within five (5) days from the date of receipt of
notice or knowledge, notify Supplier of, and provide all information
and documents relating to, any breach of this Section 3, including,
without limitation, conditions or circumstances that indicate that the
Information of Supplier has been or may have been disclosed or used
without the written consent of Supplier; provided, however, that a
disclosure of the Information of Supplier shall not be deemed a
violation of this Agreement, if such Information (a) is disclosed by
Schering or its Agents, inadvertently, accidentally, or without
Schering's informed authorization despite the degree of care which
Schering affords its own confidential information or (b) subject to
Section 3.04 hereof, is produced in any judicial or governmental
action, whether or not pursuant to a protective order. Schering shall,
upon the request of Supplier and at the cost and expense of Schering,
take all steps reasonably necessary to recover any and all such
Information that has been or may have been improperly disclosed or
used.
4. Representations and Warranties.
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4.01 Supplier represents and warrants to Schering that Supplier has,
as of the date of this Agreement, no obligation or commitment, and
will not, during the term of this Agreement: (a) assume or undertake
any obligation or commitment, that is inconsistent with its
obligations under, or the terms and conditions of, this Agreement,
including, without limitation, Sections 3 through 9 hereof or (b)
enter into negotiations with any Person regarding the Material.
4.02 Supplier represents and warrants that it is the lawful owner or
licensee of the Material and all Information to be disclosed by it
under this Agreement, and that it has the right to disclose all such
Information to Schering.
4.03 Schering represents and warrants to Supplier that Schering shall
comply with all laws, rules and regulations applicable to the handling
and storage of the Material.
5. Ownership of Patents.
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5.01 All rights, title, and interest to and in the Information of
Supplier shall be and remain the property of Supplier, and no license,
right, title, or interest to or in any such Information shall be
granted or created by this Agreement, except the right to receive the
Information for the Purpose, or may be granted or created, except by
written agreement signed by a duly authorized representative of
Supplier. Schering shall not use the Material for Commercial Purposes.
5.02\All rights, title, and interest to the Developments, Findings,
Modifications, New Substances, New Uses, Results or the non-modified
parental Schering Vero cells and any modified cell lines based
thereon, shall be and remain the property of Schering, and no license,
right, title, or interest shall be granted or created by this
Agreement, except by written agreement signed by a duly authorized
representative of Schering.
6. Term and Termination.
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6.01 This Agreement shall become effective as of the Effective Date,
and, except as provided in this Section 6, shall continue in effect
until such time as: (a) Schering terminates this Agreement, in its
reasonable discretion, with or without cause, by notice to Supplier in
accordance with Section 12 hereof; (b) Schering notifies Supplier in
writing that it has completed the Purpose and does not wish to secure
from Supplier a license to use the Material for Commercial Purposes;
or (c) a Party fails to remedy or otherwise cure a breach of any
material obligation under this Agreement within thirty (30) days from
the date of receipt of notice of such breach given by the other Party;
provided, however, that, if such breach was outside the control of
such Party or such Party cures such breach within such thirty (30)-day
period, then there shall be no termination of this Agreement pursuant
to Section 6.01(c) hereof.
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6.02 Upon Supplier's written request, Schering shall, within twenty
(20) days from the date of expiration or termination of this
Agreement, return to Supplier or destroy all Material in its
possession and all extant copies of Supplier's Information, except one
(1) copy which may be retained for legal purposes. Notwithstanding any
return of Supplier's Information in accordance with this Section 6.02,
the other duties and obligations of Schering under this Agreement
that, by their nature, are to be performed or observed after
expiration or termination of this Agreement, including, without
limitation, Schering's duties and obligations under Section 3 hereof,
shall continue in effect.
7. Independent Contractor. Nothing contained in this Agreement shall be
construed to constitute either Party as a partner or agent of the other
Party or to create any other form of legal association that would impose
liability upon a Party for any act or omission of the other Party or
provide a Party with the right, power, or authority to create or impose any
duty or obligation on the other Party, it being intended that each Party
shall remain an independent contractor acting in its own name and for its
own account.
8. Headings, Counterparts and Ambiguities. The division of this Agreement
into sections and the insertion of headings are for convenience of
reference only and shall not affect the construction or interpretation of
this Agreement. This Agreement may be executed in any number of
counterparts, each of which shall be deemed an original but all of which
taken together shall constitute one and the same instrument. In
interpreting any provision of this Agreement, no weight shall be given to,
nor shall any construction or interpretation be influenced by, the fact
that counsel for one of the Parties drafted this Agreement, each Party
recognizing that it and its counsel have had an opportunity to review this
Agreement and have contributed to the final form of the same.
9. Assignment and Amendment. Neither Party shall assign this Agreement,
any portion hereof, or any obligation hereunder, except with the prior
written consent of the other Party. Neither this Agreement nor any of the
terms hereof may be amended, supplemented, waived, or modified except in a
specific writing signed by each of the Parties.
10. Waiver. A Party's failure to exercise or enforce any right conferred
upon it hereunder shall not be deemed a waiver of any such right or any
other right or operate to bar the exercise or performance thereof at any
time or times thereafter; nor shall a Party's waiver of any right hereunder
at any time be deemed a waiver thereof for any other time.
11. Governing Law. This Agreement and all issues arising hereunder or
relating hereto, including, without limitation, its construction, validity,
breach, and damages for breach, shall be governed by and construed in
accordance with the laws of the State of New Jersey (without regard to its
conflict of laws principles). Any action, cause of action, or dispute
arising under or relating to this Agreement shall be brought only in the
courts of the State of New Jersey or the federal court of the United
States, located in Newark, New Jersey, and each of the Parties expressly
consents to personal jurisdiction in the State of New Jersey with respect
to such action, cause of action, or dispute.
12. Notices. Any notice required or permitted under this Agreement shall
be in writing and shall be deemed to have been duly given when (a)
delivered by hand, courier, or express mail service (with written
confirmation of receipt), (b) sent by facsimile (with provision for
assurance of receipt in a manner typical with respect to communications of
that type), or (c) mailed by registered or certified first class mail,
return receipt requested, at the address or facsimile number set forth
below (or to such other person, address, or facsimile (fax) number as a
Party may, from time to time, designate by written notice):
(i) if to Schering:
Schering-Plough Animal Health Corporation
00000 Xxxx Xxxxxx Xxxx
Xxxxxxx, Xxxxxxxx 00000
Attention: Xxxxxxx X. Xxxxxxxxx, Xx.
Fax: 000.000.0000;
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(ii) if to Supplier:
Provectus Pharmaceuticals, Inc.
0000 Xxx Xxxxx Xxxxxxx, Xxxxx X
Xxxxxxxxx, Xxxxxxxxx 00000
Attention: Xxxxx Xxxx, Ph.D.
Fax: 000.000.0000.
13. Publicity. Neither Party shall, except with the prior written consent
of the other Party, use, disclose, or otherwise identify the name of the
other Party or any of its affiliates or the nature of this Agreement, the
Material, or the Information in any advertising, promotional material, or
publication.
14. Entire Agreement. This Agreement represents and contains the full and
complete understanding and agreement of the Parties with respect to the
subject matter hereof, and supersedes all prior and contemporaneous
agreements, understandings, and statements, including any specific legends
or statements associated with the Information when received.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be duly
executed as of the date first above written.
PROVECTUS PHARMACEUTICAL, INC.
By: /s/ H. Xxxxx Xxxx
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Name: H. Xxxxx Xxxx, Ph.D.
Title: CEO
SCHERING-PLOUGH ANIMAL HEALTH CORPORATION
By: /s/ Xxxxxx X. Xxxxx
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Name: Xxxxxx X. Xxxxx
Title: Vice President, Research & Development
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