RESEARCH COLLABORATION AGREEMENT

 

claims are directed to an Invention), and foreign equivalents thereof, as well as any patents issued thereon or reissues or reexaminations thereof. “Institution Patent Rights” means Patent Rights claiming Inventions that are conceived or reduced to practice solely by employees of Institution or by employees of Sponsor utilizing Institution facilities, as determined under the patent laws of the United States, and assigned to Institution. “Joint Patent Rights” means Patent Rights claiming Inventions that are conceived or reduced to practice jointly by employees of Institution and employees of Sponsor, as determined under the patent laws of the United States, and assigned to institution or Sponsor.

 

1.6.                              “Principal Investigator” means an employee of Institution who has primary responsibility for the performance of the Research Project. The Principal Investigator is identified in Section 2.1 below.

 

1.7.                              “Proprietary Materials” means any proprietary Materials other than Project Materials that are furnished by one party (the “Supplier”) to the other party (the “Recipient”) in connection with performance of the Research Project.

 

1.8.                              “Research Project” means the activities described on Exhibit A (“Description of Research Project”), which Institution agrees to perform under the terms and conditions of this Agreement.

 

1.9.                              “Research Results” means all data, test results, laboratory notes, techniques, know-how, and any other information obtained in the performance of the Research Project. The term “Research Results” does not include Project Materials, patentable inventions, copyrighted or copyrightable works, trademarks or service marks, or other intellectual property based on the Research Results. As a matter of policy, Institution ordinarily will not assert trade secret protection for Research Results.

 

1.10.                        “Technical Representative” means an individual designated by Sponsor as its principal contact for consultation and communications with Institution and the Principal Investigator. The Technical Representative is identified in Section 2.1 below.

 

2.               Performance of Research Project.

 

2.1.                              Principal Investigator and Technical Representative. Dr. Robert Nicolosi, who shall serve as the Project Manager, will have overall responsibility for the Research Project and will be one of the three faculty representatives that serve on the Advisory Committee. The Principal Investigator shall be Dr. Julie Chen, Director – UML Nanomanufacturing Center.  She will manage the interaction required to identify specific research initiatives recommended by the Advisory Committee to be set up under this agreement.  This Advisory Committee will be composed of Dr. Chen, Dr. Nicolosi and one other faculty representative and two Technical Representatives of Sponsor. When a project is identified, Dr. Chen will recommend a specific Principal Investigator for that project.  If Dr. Chen ceases to serve as Principal Investigator for any reason, Institution will promptly notify Sponsor and Institution and Sponsor shall use good faith efforts to identify a mutually acceptable replacement within sixty (60) days. If a suitable replacement Principal Investigator cannot be identified within the sixty-day period, Sponsor may

 

 

terminate this Agreement as provided in Section 6.2. The Sponsor may change its Technical Representative upon thirty (30) days written notice to Institution.

 

2.2.                              Performance of Research Project. Institution shall use reasonable efforts to complete the Research Project; however, Institution makes no warranties regarding the completion of the Research Project or the achievement of any particular results. The Technical Representative may consult informally with the Principal Investigator, both in person and by telephone, regarding the performance of the Research Project. The Institution shall provide the Technical Representative reasonable access to Institution facilities where the Research Project is being conducted.

 

2.3                                 Records, Materials, and Reports. The Project Manager shall prepare and maintain records containing all Research Results, including laboratory notebooks maintained in accordance with customary academic practice. During the term of this Agreement, at his/her convenience, the Principal Investigator shall provide the Technical Representative reasonable access to research records, and the Project Manager shall furnish Sponsor, upon request, reasonable amounts of any Project Materials, subject to availability. Within ninety (90) days after the expiration or termination of this Agreement, the Principal Investigator shall deliver to sponsor a final report describing all significant Research Results in reasonable detail. However, the Principal Investigator may extend this ninety-day deadline for a period of up to an additional thirty (30) days with the consent of Sponsor, which consent shall not be unreasonably withheld.

 

3.               Responsibilities of Sponsor.

 

3.1.                              Contributions to Research Project. Sponsor shall contribute to the Research Project the support, equipment, personnel, technology, and other resources listed on Exhibit B (“Sponsor Contributions”). Sponsor may also furnish Institution and the Principal Investigator with certain Confidential Information or Proprietary Materials, which shall remain the property of Sponsor. Institution and the Principal Investigator reserve the right to refuse to accept any Confidential Information or Proprietary Materials offered by Sponsor.  Exhibit C (“Sponsor Value Contribution to the Research Collaboration Agreement”) provides an estimated value of $545,000 as Sponsor’s contribution to this collaboration.

 

3.2.                              Consideration to Institution. The primary consideration is related to access to the Microfluidizer technologies for purposes of evaluation in UML’s Nanomanufacturing program directed towards new product applications and formulations.

 

In addition, for each project approved by the Advisory Committee, MFIC will bear the first $3,000 for each discrete project.  Any additional monies required for the project will be provided by UML if the monies are available.  A Project will proceed only if the Scope of Work, appropriate joint UML and MFIC personnel, a budget, and funds are available.

 

4.               Confidential Information: Proprietary Materials: Publications.

 

4.1.                              Confidential information.

 

(a)   Designation. Confidential Information that is disclosed in writing shall be marked with a legend (such as, “Confidential” or “Proprietary”), indicating its

 

 

confidential status. Confidential Information that is disclosed orally or visually shall be designated as such at the time of its disclosure and shall be documented in a written notice prepared by the Disclosing Party and delivered as soon as possible to the Receiving Party but at latest within thirty (30) days of the date of disclosure; the notice shall summarize the Confidential Information disclosed to the Receiving Party and reference the time and place of disclosure.

 

(b)   Obligations. During the term of this Agreement and thereafter for a period of five (5) years, the Receiving Party shall (i) maintain all Confidential Information in confidence, except that the Receiving Party may disclose or permit the disclosure of Confidential Information to its directors, officers, employees, consultants, and advisors who are obligated to maintain the confidential nature of Confidential Information and who need to know Confidential Information for the performance of the Research Project; (ii) use all Confidential Information solely for the performance or furtherance of the Research Project; and (iii) allow its directors, officers, employees, consultants, and advisors to reproduce the Confidential Information only to the extent necessary for performance of the Research Project, with all reproductions being considered Confidential Information.

 

(c)   Exceptions. The obligations of the Receiving Party under Section 4.1.(b) above do not apply to the extent that the Receiving Party can demonstrate that Confidential Information (i) was in the public domain prior to the time of its disclosure under this Agreement; however this exception shall not apply to any specific information merely because it is included in more general non-confidential information, nor to any specific combination of information merely because individual elements, but not the combination, are included in non-confidential information, (ii) entered the public domain after the time of its disclosure under this Agreement through means other than an unauthorized disclosure resulting from an act or omission by the Receiving Party; (iii) was independently developed or discovered by the Receiving Party without use of the Confidential Information, (iv) is or was disclosed to the Receiving Party at any time by a third party having no fiduciary relationship with the Disclosing Party and having no obligation of confidentiality with respect to the Confidential Information; or (v) is, in the opinion of legal counsel to the Receiving Party required to be disclosed to comply with applicable laws or regulations, or with a court or administrative order, provided that the Disclosing Party receives reasonable prior written notice of that disclosure in order to afford the Disclosing Party the opportunity, at election and expense of the Disclosing Party, to respond to such request and /or to attempt to block such disclosure. Further, if such disclosure is compelled the Receiving Party shall disclose only the minimum of the Confidential Information that is required to be disclosed to comply with such order, law or regulation.

 

(d)   Ownership and Return. The Receiving Party acknowledges that the Disclosing Party (or any third party entrusting its own information to the Disclosing Party) owns its Confidential Information in the possession of the Receiving Party. Upon the expiration or termination of this Agreement or at the request of the Disclosing Party, the Receiving party shall return to the Disclosing Party all originals, copies, and summaries of documents, materials, and other tangible manifestations of Confidential Information in

 

 

the possession or control of the Receiving Party, except that the Receiving Party may retain one (1) copy of the Confidential Information in the possession of its legal counsel solely for the purpose of monitoring its obligations under this Agreement.

 

4.2.                              Proprietary Materials.

 

(a)   Limited Use and Transfer. The Recipient shall use Proprietary Materials only for the performance of the Research Project. The Recipient shall use the Proprietary Materials only in compliance with all applicable federal, state, and local laws and regulations. The Recipient shall not use the Proprietary Materials in any in vivo experiments on human subjects. The Recipient shall not transfer any Proprietary Materials to any third party without the prior written consent of the Supplier.

 

(b)   Warranty Disclaimer. THE SUPPLIER MAKES NO REPRESENTATIONS, AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, WITH RESPECT TO PROPRIETARY MATERIALS. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE USE OF PROPRIETARY MATERIALS WILL NOT INFRINGE ANY PATENT RIGHTS OR OTHER PROPRIETARY RIGHTS OF A THIRD PARTY.

 

(c) The Recipient acknowledges that the Supplier (or any third party entrusting its Materials to the Supplier) claims ownership of its Proprietary Materials in the possession of the Recipient. The Recipient agrees to cause its employees to execute and deliver any documents of assignment or conveyance to effectuate the ownership rights of the Supplier in Proprietary Materials. Upon the expiration or termination of this Agreement, the Recipient shall at the instruction of Supplier either destroy or return any unused Proprietary Materials.

 

4.3.                              Publications. Institution and its employees may publicly disclose (through journals, lectures, or otherwise) the Research Results, provided that the Institution shall have provided a copy of the proposed disclosure to Sponsor at least sixty (60) days prior to the submission of any written publication and at least thirty (30) days prior to any oral public disclosure (the “Review Period “) to allow Sponsor to determine whether any Invention or its Confidential Information would be disclosed. The parties expressly agree that research grant proposals submitted to federal, state, or local agencies or non-profit organizations should not be subject to review under this Section. If Sponsor reasonably determines that the proposed disclosure would reveal an Invention or Sponsor Confidential Information, then Sponsor shall notify Institution and the Principal Investigator of the determination and its basis prior to the expiration of the Review Period. With respect to disclosure of an Invention, upon receipt of timely notice by Sponsor, the Institution agrees to delay submission of the written publication or presentation of the oral public disclosure until one (1) of the following events occurs: (i) Sponsor and Institution agree that no patentable Invention exists; (ii) Institution or Sponsor files a patent application claiming the relevant Invention pursuant to Article 5; (iii) Sponsor and Institution jointly agree upon deletions that prevent disclosure of any Invention; or (iv) a period of sixty (60) days elapses commencing with the effective date of notice to Institution. With respect to disclosure of Sponsor Confidential

 

 

Information, upon receipt of timely notice by Sponsor, the Institution shall use reasonable efforts to cause its employees to delete the Confidential Information from any proposed disclosure.

 

5.0         Intellectual Property.

 

The parties agree to the following:

 

5.1.                              Assignment of Rights in Inventions and Project Materials. Either the Principal Investigator or the Project Manager, as appropriate, shall assign to Institution all rights in Inventions and commercial rights in Project Materials. The Principal Investigator shall certify that every person involved in the Research Project shall have signed the University Participation Agreement, which assigns to Institution all rights in Inventions and commercial rights in Project Materials. Sponsor represents and warrants that all of its employees and consultants who may be involved in the Research Project shall have agreed to assign to Sponsor all rights in Inventions and all commercial rights in Project Materials.

 

5.2.                              0wnership of Patent Rights and Project Materials. In accordance with United States patent law, Institution shall have sole ownership of all Institution Patent Rights and Institution and Sponsor shall have joint, undivided ownership of all Joint Patent Rights. Institution shall have sole ownership of commercial rights in Project Materials not claimed in the Patent Rights; however, if a Project Material incorporates one or more Sponsor Proprietary Materials, Institution may not exploit commercial rights in that Project Material without the written consent of Sponsor.

 

5.3.                              Notice of Inventions and Project Materials. The Principal Investigator or the Project Manager, as appropriate, shall promptly disclose to Institution the conception or reduction to practice of any Invention and the development or discovery of any commercially valuable Project Material that is not otherwise disclosed as an Invention. Institution and Sponsor shall provide prompt written notice to the other of the internal disclosure by its employees of any Invention. Institution and Sponsor shall discuss whether to obtain Patent Rights for the Invention and whether the Patent Rights would constitute Institution Patent Rights or Joint Patent Rights. Institution shall provide prompt written notice to Sponsor of the internal disclosure of any commercially valuable Project Material that is not otherwise disclosed as an Invention.

 

5.4.                              Responsibility for Patent Rights.

 

Subject to any Inter-Institutional Patent Management Agreement resulting from joint inventions, the following procedures will be followed.

 

(a)   Primary Responsibility with Institution. Institution shall have primary responsibility for the preparation, filing, prosecution, and maintenance of all Institution Patent Rights, using patent counsel reasonably acceptable to Sponsor. Institution shall consult with Sponsor as to the preparation, filing, prosecution and maintenance of Patent Rights reasonably prior to any deadline or action with the United States Patent & Trademark Office or any foreign patent office and shall furnish Sponsor with copies of all relevant documents reasonably in advance of such consultation.

 

 

(b)   Cooperation. Institution and Sponsor shall cooperate fully in the preparation, filing, prosecution, and maintenance of all Institution Patent Rights and Joint Patent Rights. Cooperation includes, without limitation, (i) promptly executing all papers and instruments or requiring employees of Institution or Sponsor to execute papers and instruments as reasonable and appropriate so as to enable Institution or Sponsor to file, prosecute, and maintain such Patent Rights in any country; and (ii) promptly informing the other party of matters that may affect the preparation, filing, prosecution, or maintenance of any such Patent Rights.

 

(c) Payment of Expenses. Within thirty (30) days after Institution invoices Sponsor for patent expenses related to Section 5.5 or from the Inter-Institutional Patent Management Agreement, Sponsor shall reimburse Institution for all reasonable patent-related expenses incurred by Institution pursuant to Subsection 5.4(a). Sponsor may elect, upon sixty (60) days written notice to Institution, to cease payment of the expenses associated with obtaining or maintaining patent protection of or one or more Patent Rights in one or more countries. In that event, Sponsor will lose all rights under this Agreement with respect to Patent Rights in those countries.

 

5.5.                              Option for Exclusive License. For work funded by the Sponsor, Institution grants Sponsor a first option to obtain a worldwide, royalty-bearing, exclusive license (with the right to sublicense) under its commercial rights in any Institution Patent Rights and Joint Patent Rights in the Field (the “Option Right”). Sponsor may exercise the Option Right with respect to a particular Patent Right by written notice to Institution, which is received by Institution not later than sixty (60) days after the disclosure to Sponsor of the relevant Invention (the “Option Period”).  If sponsor elects not to exercise the Option Right, or fails to exercise the Option Right during the Option Period, Institution is free to license its commercial rights under the relevant Patent Right to any third party. If Sponsor does elect to exercise the Option Right, Institution and Sponsor shall negotiate in good faith a license agreement containing commercially reasonable terms.  Institution and Sponsor are unable to reach agreement within six (6) months after Sponsor exercised the Option Right (the “Negotiation Period”), Institution may offer its commercial rights in the relevant Patent Right to any third parties. However, for a period of one (l) year after the Negotiation Period expires, Institution may only offer those rights to third parties on terms that are not more favorable than the last offer made by Institution to Sponsor, unless Institution first provides Sponsor with written notice of the more favorable offer and Sponsor either (i) declines in writing to accept the offer or (ii) fails to respond to the offer within thirty (30) days alter receiving the notice.

 

5.6                                 Joint Inventions.  In the case of joint inventions, the parties agree to execute an Inter-Institutional Patent Management Agreement using the University’s Agreement in which the following terms will apply:

 

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