AGREEMENT ON COOPERATIVE RESEARCH AND DEVELOPMENTResearch and Development Agreement |
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Search Research and Development Agreement by:
Exhibit 10.111
AGREEMENT ON COOPERATIVE RESEARCH AND DEVELOPMENT
Institute of Bioorganic Chemistry, Polish Academy of Sciences
(hereinafter referred to as “RESEARCHERS” )
and
SenetekPLC
831 Latour Court, Suite A
Napa, California 94558 USA
(hereinafter referred to as “SENETEK” )
WHEREAS the RESEARCHERS are performing basic research on plant nucleic acids (the “Compounds”) and are willing to provide to SENETEK samples of the Compounds and their analogs and related information developed by the RESEARCHERS, including any covered by patents and/or patent applications owned by the RESEARCHERS, for testing, possible further development by SENETEK, and ultimately possible licensing to and commercialization by SENETEK; and
WHEREAS SENETEK is a company developing pharmaceutical and cosmeceutical products and, in connection with such business, has made certain inventions regarding cytokinins and cytokinin analogs and methods of using them for various indications related to ameliorating signs of aging and anti-inflammatory indications which are covered by the SENETEK PATENTS, as hereinafter defined; and
WHEREAS SENETEK is interested in testing and evaluating, in cooperation with the RESEARCHERS, the Compounds, including the Compounds in combination with active ingredients covered by the SENETEK PATENTS, as hereinafter defined, developed by the RESEARCHERS and in obtaining licenses covering such of these compounds as it may select as hereinafter provided.
NOW THEREFORE in consideration of above-mentioned premises the parties agree as follows:
Plant Nucleic Acids
ARTICLE 1 - DEFINITIONS
AFFILIATES as used herein shall mean any legal entity which, at the EFFECTIVE DATE or during the validity of this Agreement:
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directly or indirectly controls SENETEK, |
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is under the same direct or indirect control as SENETEK, or |
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is directly controlled by SENETEK |
A legal entity is considered controlling another:
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when it directly or indirectly owns over 50% (fifty percent) of the capital of this legal entity or more than 50% (fifty percent) of the voting rights of its shareholders or associates; or |
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when it has the direct or indirect de facto, directly or indirectly, the power to decide within this legal entity how the affairs shall be conducted. |
AGREEMENT as used herein shall mean this agreement and any and all Annexes, appendices and other addenda to it as it may be varied from time to time
COMPOUNDS as used herein means plant nucleic acids and their analogs and derivatives, developed, in-licensed or otherwise acquired by the RESEARCHERS that may be used for any application.
TESTING as used herein means any testing to determine the most suitable COMPOUNDS for patenting and further development.
RESEARCHERS as used herein means the Institute of Bioorganic Chemistry, Polish Academy of Sciences
PARTY as used herein means any of the PARTIES to this AGREEMENT as the case may be, and all of them when used in plural.
NEW PATENT APPLICATIONS as used herein means patent applications of the RESEARCHERS to be prepared and filed in the name of the RESEARCHERS with technical and financial support of SENETEK, including those the subject of which is medical and cosmetic skincare applications of COMPOUNDS, and any and all patents issued thereon or having a priority date based thereon.
RESEARCHERS’ PATENTS as used herein means any currently owned patents and patent applications of RESEARCHERS covering COMPOUNDS, other than NEW PATENT APPLICATIONS.
SENETEK PATENTS as used herein means SENETEK’s issued patents (U.S. Patents 5,371,089,5,602,139, 5,614,407, 5,021,422, 5,164,394, and 5,151,425 and the corresponding international and foreign patents) related to the use of cytokinins for anti-inflammatory indications and for medical skin care applications and/or cosmetic skin care applications, and any patents hereafter issued which are entitled to the same priority date(s) as such issued patents.
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PRODUCT as used herein means any product which or the process of production of which falls within a VALID CLAIM of a patent licensed to SENETEK pursuant to this AGREEMENT.
SUB-LICENSEES as used herein mean any third parties who may obtain a license from SENETEK to develop and/or commercially exploit any COMPOUND covered by a patent licensed to SENETEK pursuant to this AGREEMENT.
FIRST COMMERCIAL SALE as used herein means the first commercial sale of a PRODUCT to a third party made by either SENETEK or its AFFILIATES or SUBLICENSEES.
NET SALES as used herein means the gross amount invoiced by SENETEK and its AFFILIATES to their customers or by SUB-LICENSEES and their AFFILIATES to their customers, including distributors and third parties, for sales of PRODUCTS, less any normal trade discounts and credit notes issued in respect of returned PRODUCTS, any purchase, sales, import, or value added taxes, and charges in respect to carriage. Should SENETEK or a SUB-LICENSEE sell PRODUCTS to an AFFILIATE (or vice-versa) which thereafter sell them to an unrelated third party, the sales between the AFFILIATE (or SENETEK or SUBLICENSEE) and the unrelated third party (and not the sales between SENETEK or SUBLICENSEE and its AFFILIATE) shall be considered NET SALES.
VALID CLAIM as used herein means any claim of an issued and unexpired patent or a claim of a pending patent application licensed to SENETEK pursuant to this AGREEMENT which has not been held un-patentable, invalid or unenforceable by a court or other government agency of competent jurisdiction and has not been admitted to be invalid or unenforceable through reissue, re-examination, disclaimer or otherwise; provided, however, that if the holding of such court or agency is later reversed by a court or agency with overriding authority, the claim shall be reinstated as a VALID CLAIM after the date of such reversal.
EFFECTIVE DATE as used herein shall mean the date of the last signature of this AGREEMENT by the PARTIES.
All plurals may be read in the singular and vice versa.
The headings are inserted for convenience only and shall be ignored in construing this AGREEMENT.
ARTICLE 2 - SCOPE OF THE AGREEMENT
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2.1 |
Subject to the terms and conditions of this AGREEMENT, SENETEK shall from time to time, as provided in Article 3 below, obtain from the RESEARCHERS such of the COMPOUNDS as SENETEK may designate. |
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2.2 |
During the term of this AGREEMENT SENETEK will screen and conduct TESTING of these COMPOUNDS.. |
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2.3 |
If SENETEK finds one or more of the TESTED COMPOUNDS of interest and wishes to exploit it or them commercially, SENETEK and the RESEARCHERS will negotiate and sign license agreements, as defined in Article 3.5 hereof. |
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SENETEK will pay royalty related to the NET SALES of PRODUCTS to RESEARCHERS as set in the ANNEX 1 - License Agreement Term Sheet, attached to this AGREEMENT. |
ARTICLE 3 - DUTIES OF THE PARTIES
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3.1 |
Promptly after the EFFECTIVE DATE, and thereafter at least once every calendar year, the RESEARCHERS shall provide SENETEK with a complete listing and description of all COMPOUNDS developed, in licensed or otherwise acquired by the RESEARCHERS, together with all chemical and biological information in their possession with respect to such COMPOUNDS and specifying those COMPOUNDS, if any, which are covered by RESEARCHERS’ PATENTS. |
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Not later than two (2) weeks after delivery of such information by the RESEARCHERS, SENETEK will select and advise the RESEARCHERS, in writing, of those COMPOUNDS on which it wishes to conduct TESTING at that time. Notwithstanding the foregoing, as regards COMPOUNDS which the RESEARCHERS’ listing under Article 3.1 specifies are covered by the RESEARCHERS’ PATENTS, if SENETEK does not give the RESEARCHERS written advice that it wishes to conduct TESTING of any such COMPOUND within four (4) months after it receives the listing provided for in Article 3.1, SENETEK shall be considered to have waived its rights to such COMPOUND for all purposes of this AGREEMENT and the RESEARCHERS shall be free to commercialize such COMPOUND themselves or enter into an evaluation agreement or license or other agreement with respect thereto with any third party on such terms as they may determine in their sole discretion, subject, however, to SENETEK’s rights, if any, under the SENETEK PATENTS and provided, however, that before RESEARCHERS shall enter into an evaluation agreement or license or other agreement with any third party, RESEARCHERS shall give notice to SENETEK of the terms on which they propose to enter into such evaluation agreement or license or other agreement and SENETEK shall have thirty (30) days to enter into such agreement with the RESEARCHERS on the same terms, providing these terms are not worse for the RESEARCHERS than the terms in Annex 1- License Agreement Term Sheet, in which case the terms of Annex 1 will be used. |
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The RESEARCHERS shall within two (2) weeks of receipt of each advice of SENETEK specifying selected COMPOUNDS it then wishes to TEST, deliver the selected COMPOUNDS to SENETEK in a quantity of at least 100 mg each. |
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3.4 |
If practicable, not later than nine (9) months after each delivery by the RESEARCHERS of the listing of COMPOUNDS as provided in Article 3.1, SENETEK will provide the RESEARCHERS with a report of the results of the TESTING of the new COMPOUNDS set forth in such listing. SENETEK will also indicate those COMPOUNDS for which SENETEK wishes to be granted a license. SENETEK may, if it so chooses, deliver such reports and indicate COMPOUNDS it wishes to license on more than one occasion during such period. Such license shall be exclusive and worldwide, for all applications. |
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3.5 |
Within three (3) months of SENETEK’s decision to license COMPOUNDS as provided in Article 3.4, the PARTIES will enter into a License Agreement with respect to such COMPOUNDS having principal terms as set forth in Annex 1- License Agreement Term. The final details of the License Agreement will be negotiated in good faith by the PARTIES hereto. |
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If SENETEK does not deliver one or more reports as provided in Article 3.4 or, having delivered such report or reports, decides not to execute a License Agreement negotiated by the PARTIES as provided in Article 3.5, as to any particular COMPOUND or COMPOUNDS covered by any NEW PATENT APPLICATION, then the PARTIES will agree how to commercialize such COMPOUNDS and how to share revenues from such commercialization. Any such agreement on particular COMPOUNDS will be recorded in writing, signed by all PARTIES, and will become an appendix to this AGREEMENT. In case of COMPOUNDS covered by RESEARCHERS’ PATENTS, RESEARCHERS shall be free to commercialize such COMPOUND or COMPOUNDS themselves or enter into an evaluation agreement or license or other agreement with respect thereto with any third party on such terms as they may determine in their sole discretion, subject, however, to SENETEK’s rights, if any, under the SENETEK PATENTS. |
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3.7 |
RESEARCHERS agree that they will not enter into any cooperative research and development agreement with any third party involving any chemical compounds other than COMPOUNDS for cosmeceutical or anti-aging dermatological uses without first offering to SENETEK the opportunity to enter into such cooperative research and development agreement instead of such third party on the same terms as those proposed by or to such third party. SENETEK will exercise its right of first refusal within 4 weeks of receiving the proposed cooperative research and development agreement. |
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3.8 |
RESEARCHERS represent and warrant to SENETEK that their entering into and performing this AGREEMENT will not violate any agreement or obligation of either of the RESEARCHERS with or to any third party or give rise to any claim by any third party. The RESEARCHERS shall deliver to SENETEK, together with |
