RESEARCH COLLABORATION AGREEMENT

 

                                                                    EXHIBIT 10.1

 

 

                    RESEARCH COLLABORATION AGREEMENT BETWEEN

             THE RESEARCH FOUNDATION OF STATE UNIVERSITY OF NEW YORK

                                AND B TWELVE LTD.

 

         AGREEMENT made this 19 day of August 1999 by and between THE RESEARCH

FOUNDATION OF STATE UNIVERSITY OF NEW YORK, a non-profit, educational

corporation organized and existing under the laws of the State of New York, with

its principal offices located at State University Plaza, Albany, New York

(mailing address: Post Office Box 9, Albany New York 12201-0009), hereinafter

referred to as the "FOUNDATION", acting on behalf of the State University of New

York Health Science Center at Brooklyn, hereinafter referred to as "UNIVERSITY,"

and B TWELVE LTD., a corporation organized and existing under the laws of the

Province of Ontario, with its principal office located at Suite 3303, 130

Adelaide Street West, Toronto, Ontario, Canada, M5H 3P5, hereinafter referred to

as "COLLABORATOR".

 

         WHEREAS, COLLABORATOR is engaged in the development of Vitamin

B12-related agents that have potential utilization in patient care and

treatment; and

 

         WHEREAS, UNIVERSITY has existing antibodies to human transcobalamin II

which inhibit the uptake of Vitamin B12 as described in Exhibit A (hereinafter

referred to as the "Antibodies"), as well as research facilities and situations

that would allow investigation and study of other Vitamin B12-related agents as

described in Exhibit B (hereinafter referred to as the "Research Plan"); a copy

of both Exhibits A and B are attached hereto and incorporated in their entirety

herein by reference; and

 

         WHEREAS, both COLLABORATOR and UNIVERSITY consider it desirable to

evaluate the Antibodies and perform the Research Plan;

 

         NOW, THEREFORE, in consideration of the promises and mutual covenants

contained herein, COLLABORATOR and UNIVERSITY agree as follows:

 

                         I. Evaluation of the Antibodies

 

1.       Providing Antibodies/Option to License

 

             a. UNIVERSITY agrees to provide the Antibodies to COLLABORATOR for

the purpose of evaluation of potential therapeutic utility. UNIVERSITY further

agrees to provide COLLABORATOR any required or necessary technical support

and/or know-how for evaluation of the same by COLLABORATOR during the period of

this Research Collaboration Agreement.

 

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             b. UNIVERSITY hereby grants COLLABORATOR an option to negotiate and

acquire an exclusive, world-wide. royalty bearing license to the Antibodies

(including patent applications. patents and copyrights thereon) following

COLLABORATOR evaluation of the same. DIVERSITY hereby warrants that it has the

exclusive right to license the Antibodies subject only to any residual rights of

the United States government pursuant to 35 U.S.C. 200 et. seq. COLLABORATOR

shall have six (6) months from the date of receipt of the Antibodies (and any

required or necessary technical support and/or know-how for evaluation of same)

to exercise this option by giving written notice to UNIVERSITY of the same.

COLLABORATOR agrees to comply with U.S. Government regulations concerning

inventions sponsored by the U.S. Government.

 

             c. If COLLABORATOR elects to exercise its option to negotiate and

acquire such a license in the time and manner provided in Article I.1.b. herein

above, COLLABORATOR and UNIVERSITY agree to enter into good faith negotiations

regarding the terms and conditions of said license, and further agree to

negotiate license fee rates and other payments that are fair and reasonable to

both parties. If UNIVERSITY and COLLABORATOR fail to enter into an agreement

during that period of time [the license option period], COLLABORATOR shall have

a right of first refusal to any terms generally more favorable offered by

UNIVERSITY to a third party for a period of one (1) year thereafter.

 

             d. In the event that the parties fail to reach an agreement

regarding the terms and conditions of said license as provided in Article I.1.c.

herein above, six (6) months after COLLABORATOR notification to UNIVERSITY of

COLLABORATOR exercise of said option pursuant to Article I.1.b. herein above,

UNIVERSITY shall have the right to enter into a license agreement concerning the

Antibodies with a third party.

 

                           II. Collaborative Research

 

         1. Research Team The Parties agree to establish a joint research and

development team (hereinafter referred to as the "Team") comprising at least the

Principal Investigators designated pursuant to Article II.3.3. herein to conduct

and monitor the research in accordance with the Research Plan. Although members

of the Team shall be considered as having been delegated to the Team, they shall

continue to remain employed by their respective employers under their respective

terms of employment.

 

         2. Review of `Work Periodic conferences shall be held by the Team to

review work progress.

 

         3. Principal Investigators Research work under this Agreement will be

performed by the UNIVERSITY Laboratory identified in the Research Plan and the

UNIVERSITY Principal Investigator(s) designated in the Research Plan will be

responsible for the scientific and technical conduct of this project on behalf

of the

 

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UNIVERSITY. Also designated in the Research Plan is the COLLABORATOR Principal

Investigator who will be responsible for the scientific and technical conduct of

this project on behalf of the COLLABORATOR.

 

         4. Research Plan Change The Research Plan may be modified by mutual

written consent of the Principle Investigators. Substantial changes in the scope

of the Research Plan will be treated as amendments under Article 111.18.

 

                        III. Performance of the Research

 

         1. Engagement COLLABORATOR agrees to engage the services of UNIVERSITY

as an independent contractor to perform the Research. The Research will be under

the supervision of Dr. Edward V. Quadros, Associate Professor of Medicine

(Research), Department of Medicine, and Dr. Sheldon P. Rothenberg, Professor of

Medicine, Department of Medicine (hereinafter referred to as "Principal

Investigators"), at UNIVERSITY, with the assistance of appropriate associates

and colleagues at UNIVERSITY as may be required. No other persons may be

substituted for the Principal Investigators without COLLABORATOR's written

approval. COLLABORATOR may exercise the Termination provisions of Article

III.16. herein below if satisfactory substitutes are not identified.

 

         2. Research UNIVERSITY agrees as an independent contractor to conduct

the Research. Such Research was originally approved by UNIVERSITY in accordance

with UNIVERSITY policy and may be subsequently amended only in accordance with

UNIVERSITY policy and the written agreement of UNIVERSITY and COLLABORATOR as

provided for in Article III.18. herein below. UNIVERSITY will apply its best

efforts to complete the Research, and will follow commonly accepted professional

standards.

 

         3. Invention and Patents

 

             a. For all purposes herein, "Invention" shall mean discovery,

concept or idea whether or not patentable or copyrightable, which (i)- arises

out of work performed pursuant to the obligations of this Agreement; (ii) is

conceived and/or reduced to practice during the term of the Agreement as defined

in Article III.15. herein below; and (iii) includes but is not limited to

processes, methods, software, formulae, techniques, compositions of matter,

devices, and improvements thereof and know-how relating, thereto. An Invention

made, using UNIVERSITY facilities, solely by one or both of the Principal

Investigators and/or other UNIVERSITY personnel as identified in Article III.1.

herein above or agents of UNIVERSITY shall be the sole property of UNIVERSITY.

An invention made jointly by employees or agents of UNIVERSITY, using,

UNIVERSITY's facilities, and COLLABORATOR, using COLLABORATOR's facilities,

shall be jointly owned by UNIVERSITY and COLLABORATOR. An Invention made solely

by employees or agents of COLLABORATOR, using COLLABORATOR's facilities, shall

 

 

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be the sole property of COLLABORATOR and are not subject to the terms and

conditions of this Agreement.

 

             b. In the event that an Invention is made. either solely by

employees or agents of UNIVERSITY. using UNIVERSITY facilities. or jointly by

employees or agents of UNIVERSITY and COLLABORATOR. using UNIVERSITY or

COLLABORATOR facilities, UNIVERSITY and COLLABORATOR agree to give notice of

such Invention to each other within three (3) months of the identification of

such Invention. Within six (6) months of notice of Invention, UNIVERSITY and

COLLABORATOR will thereupon exert their best reasonable efforts in cooperation

with each other to investigate, evaluate and determine to the mutual

satisfaction of both parties, the disposition of rights to the Invention,

including whether. by whom. and where any patent applications are to be filed.

 

             c. If, after consultation with COLLABORATOR, it is agreed by the

parties that a patent application should be filed, UNIVERSITY will prepare and

file appropriate United States and foreign patent applications on an Invention

made under this Agreement, and COLLABORATOR, will pay the cost of preparing,

filing and maintenance thereof. If COLLABORATOR notifies UNIVERSITY that it does

not intend to pay the costs of an application, then UNIVERSITY may file such

application at its own expense, and COLLABORATOR shall have no rights to such

Invention except those provided in Article III.3.d. herein below. UNIVERSITY

will provide COLLABORATOR a copy of any patent application filed on an Invention

made under this Agreement, as well as copies of any documents received or filed

during prosecution thereof. COLLABORATOR agrees to maintain any such application

and documents in confidence until it is published by UNIVERSITY or by the

respective patent office.

 

             d. UNIVERSITY hereby grants COLLABORATOR a royalty free license,

during the period of this Research Collaborative Agreement, to use an Invention

made under this Agreement within COLLABORATOR's own organization for research

purposes only, including s