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CONFIDENTIAL
TREATMENT REQUESTED
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EXHIBIT 10.19
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CONFIDENTIAL TREATMENT REQUESTED
UNDER RULE 24(b)(2) OF THE SECURITIES AND EXCHANGE ACT OF 1934.
CONFIDENTIAL TREATMENT IS REQUESTED AND IS NOTED WITH
“[CONFIDENTIAL TREATMENT REQUESTED].” AN UNREDACTED
VERSION OF THIS DOCUMENT HAS BEEN PREVIOUSLY FILED WITH THE
SECURITIES AND EXCHANGE COMMISSION.
C OLLABORATIVE R ESEARCH
A GREEMENT
B ETWEEN
U NIVERSITY OF B
RADFORD
AND
S OMANTA I NCORPORATED
CONFIDENTIAL TREATMENT
REQUESTED
Collaborative Research
Agreement
This agreement dated the 1st day of
March 2006 is between:
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(1)
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UNIVERSITY
OF BRADFORD (“ The
University”) established in England whose principal address
is Richmond Road, Bradford, BD7 1DP, UK; and
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(2)
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SOMANTA
Incorporated (“Somanta”) a company incorporated
in the United States under the law of Delaware with a registered
office at 80 Harley Street, London, W1G 7HL, UK.
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RECITALS:
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A.
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Somanta and The
University intend to enter into a research collaboration agreement
under which The University shall conduct further research funded by
Somanta on the invention(s) disclosed by The Patents, which are
owned by or exclusively licensed to Somanta.
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IT IS AGREED as follows:
In this Agreement the following
words shall have the following meanings:
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1.1
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“Background Information”
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any information
and/or Know-how made available by either party to the other party
pursuant to Clause 4.1;
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1.2
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“Commencement Date”
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The
Commencement Date shall be the date of signing this
Agreement;
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1.3
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“Intellectual Property”
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means all of the following and as they exist in
all jurisdictions throughout the world:
1.3.1 patents, patent applications and
inventions, designs and improvements described and claimed therein,
patentable inventions and other patent rights (including any
divisions, continuations, continuations-in-part, substitutions, or
reissues thereof, whether or not patents are issued on any such
applications and whether or not any such applications are modified,
withdrawn, or resubmitted);
1.3.2 trademarks, service marks, trade dress,
trade names, brand names, designs, logos, or corporate names,
whether registered or unregistered, and all registrations and
applications for registration thereof; and
1.3.3 copyrights, including all
renewals and extensions thereof, copyright registrations and
applications for registration thereof.
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CONFIDENTIAL TREATMENT
REQUESTED
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1.4
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“Background Intellectual
Property”
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Intellectual
Property previously developed and owned or exclusively licensed to
the respective parties which is required for carrying out the
responsibilities in the Research Project pursuant to Clauses 4.2
and 4.3 and Schedule 2;
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1.5
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“Know-how”
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All technical
information in the Field created during research carried out by The
University under the direction of Prof. Laurence Patterson in the
possession of The University relating directly to the inventions
claimed in The Patents;
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1.6
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“The
Patents”
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[CONFIDENTIAL TREATMENT
REQUESTED]
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1.7
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“Patent
A”
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[CONFIDENTIAL TREATMENT
REQUESTED]
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1.8
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“Patent
B”
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[CONFIDENTIAL TREATMENT
REQUESTED]
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1.9
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“Payment
Schedule”
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The payments
due to be paid by Somanta to The University for research conducted
under the agreed Project Plan and set out in Schedule 1 and Clause
3.1.
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1.10
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“Project
Intellectual Property”
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All
Intellectual Property arising out of the Research Project within
the Project Plan including, without limitation, the Project
Information;
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1.11
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“Project
Information”
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all
discoveries, inventions, whether patentable or not, results, data,
analyses, designs, formulae, processes, specifications, reports,
methods, Know-how, trade secrets, drawings or other information
arising out of the Research Project;
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1.12
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“Project
Plan”
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the timetable,
research and development objectives, deliverables and plan of work
for the Research Project agreed by The University and Somanta, and
set out in Schedule 2 as may be amended from time to
time;
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1.13
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“University’s Project
Responsibilities”
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the work to be
carried out by The University under the Research Project as
described in Schedule 2 as may be amended from time to
time;
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CONFIDENTIAL TREATMENT
REQUESTED
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1.14
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“University’s Project
Scientists”
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including Prof.
Laurence Patterson and his research team (employed by The
University) and any replacements thereof;
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1.15
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“University’s Project
Team”
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The
University’s Project Scientists and any other individuals
involved in the Research Project by The University;
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1.16
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“Field”
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Area of
scientific research undertaken by the University Project Team to
complete the Research Project;
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1.17
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“The
Research Project”
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The research
undertaken as described in the Project Plan and performed by The
University’s Project Team;
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1.18
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“The
Research Team”
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The team
involved in the delivery of the research collaboration including
the University’s Project Team and those individuals involved
in the research either directly or indirectly at
Somanta;
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CONFIDENTIAL TREATMENT
REQUESTED
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2.1
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The University
shall carry out its Project Responsibilities with reasonable skill
and care, and in accordance with the timetable and scope set out
specifically in the Project Plan (Schedule 2) in connection to The
Patents which is the condition precedent of the Research
Project.
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2.2
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At the end of
each three month period, The University shall notify Somanta with a
progress report on the Research Project setting out the
following:-
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2.2.1
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the work which
The University has carried out on the Research Project during the
previous three months;
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2.2.2
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any data and/or
results obtained during the previous three months;
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2.2.3
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the work that
The University intends to carry out during the next three months;
and
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2.2.4
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details of any
inventions made in the course of carrying out the Research Project
as described in the Project Plan.
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2.3
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Within 14 days
of the end of each calendar quarter the parties shall meet to
discuss progress on the Research Project in general and in
particular The University’s latest progress report submitted
under Clause 2.2. The University shall procure that the Project
Scientists shall attend such meetings together with such other
members of the University’s Project Team as Somanta may
reasonably request. This meeting should occur at a destination and
time previously agreed by both parties and at Somanta’s
expense.
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2.4
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The University shall use The
University’s Project Scientists to carry out and/or supervise
The University’s Project Responsibilities. If, due to
circumstances beyond the reasonable control of The University, it
is necessary to replace any of the University’s Project
Scientists then the parties shall promptly meet to discuss
potential
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CONFIDENTIAL TREATMENT
REQUESTED
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replacements of equivalent
qualification and experience in the Field. The University shall not
replace any of The University’s Project Scientists on the
Research Project without the prior written approval of
Somanta.
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2.5
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The University
shall have discretion following consultation with Somanta to
replace other members of The University’s Project Team during
the Research Project with replacements of appropriate
qualifications, skills and experience in the Field.
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3.1
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In
consideration of The University complying with its obligations
under this Agreement, Somanta shall pay to The University the
amounts set out in the Payment Schedule paid quarterly, in arrears
from the Commencement Date.
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3.2
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All sums due
under this Agreement shall be paid in [CONFIDENTIAL TREATMENT
REQUESTED].
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3.3
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Sums specified
in this Agreement in relation to the Payment Schedule are
[CONFIDENTIAL TREATMENT REQUESTED] of Value Added
Tax.
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CONFIDENTIAL TREATMENT
REQUESTED
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4.
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Ownership
and Use of Background Information, Background Intellectual Property
and the Project Intellectual Property
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4.1
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Each party
shall make available to the other such of its Background
Information as may assist the other party in carrying out its
responsibilities under the Research Project provided that nothing
in this Clause 4.1 shall oblige either party to act in breach of a
confidentiality obligation owed to any third party.
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4.2
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Ownership of
Background Intellectual Property shall remain vested in the party
making such Background Intellectual Property available.
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4.3
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Each party
hereby grants to the other a non-exclusive, non-transferable,
non-sublicensable, royalty-free licence to make use of its
Background Intellectual Property solely for the purposes of
carrying out its responsibilities under the Research
Project.
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4.4
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Somanta shall own the entire
right, title and interest in and to all Project Intellectual
Property discovered, developed, or invented in the course of
performing the Research Project as defined within the Project Plan
or otherwise related to Alchemix or Prodrax, whether solely by a
party or jointly by the parties subject to clause 4.5. The
University hereby assigns to Somanta all right, title and interest,
if any, The University has in any Project Intellectual Property;
provided that in the event that the foregoing assignment would be
void or impermissible, then The University automatically shall be
deemed to have granted to Somanta the perpetual, irrevocable, fully
paid-up, freely sub-licensable license to use and practice such
Project Intellectual Property for any and all purposes, which
license shall be exclusive to Somanta, and which license shall
survive any expiration or termination of this Agreement.
Notwithstanding the foregoing, Somanta hereby grants to The
University a perpetual, irrevocable, royalty-free,
non-sublicensable license to use and practice Project Intellectual
Property solely for non-commercial research purposes.
University
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CONFIDENTIAL TREATMENT
REQUESTED
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hereby agrees that any and all
University employees, students or any other persons who provide
services in connection with the Research Project will have assigned
any and all rights such employee, student or any other person may
obtain in any technology or other information by virtue of such
services to the University.
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4.5
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Somanta shall
have the exclusive right to apply for patents in respect of
improvements and/or inventions made in the course of the Research
Project within The Project Plan and The University shall provide
Somanta with such assistance as Somanta shall from time to time
request with the filing and prosecution of such patent
applications, entirely at Somanta’s expense.
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4.6
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For the
avoidance of doubt, notwithstanding Clause 4.4, The University and
Somanta shall own the Intellectual Property, improvements and
inventions created or arising outside The Project Plan and
unrelated to either Alchemix or Prodrax jointly or solely in
accordance of contribution of each party; provided,
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