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
agree
