Preview of our top selling Research Agreement
Sequenom - Sponsored Research Agreement
SPONSORED RESEARCH AGREEMENT
This AGREEMENT, effective as of October 1, 1999 (the "Effective Date") and expiring as of September 30, 2000, is made by and between the TRUSTEES OF BOSTON UNIVERSITY (hereinafter referred to as "UNIVERSITY") having a principal address at 881 Commonwealth Avenue, Boston, Massachusetts 02215 and Sequenom, Inc. (hereinafter referred to as "SPONSOR") a Delaware corporation having its principal place of business at 11555 Sorrento Valley Road, San Diego, CA 92121.
WHEREAS, the research program contemplated by this Agreement is of mutual interest and benefit to UNIVERSITY and SPONSOR and will further the instructional and research objectives of the UNIVERSITY in a manner consistent with its status as a non-profit, tax-exempt, educational institution,
NOW, THEREFORE, in consideration of the mutual covenants and promises herein contained, UNIVERSITY and SPONSOR agree as follows:
I. RESEARCH PROGRAM
1.1 UNIVERSITY undertakes to conduct the research program ("Research Program")
as described in the attached Exhibit A titled "Research Program Scope of
Work," and will furnish the facilities and support necessary to carry out
such Research Program. The Research Program will be under the direction of
Dr. Charles Cantor, as Principal Investigator, and Dr. Hubert Koster, as
SPONSOR's Technical Representative. SPONSOR may change its Technical
Representative at any time upon written notice to UNIVERSITY.
1.2 SPONSOR understands that UNIVERSITY's primary mission is education and
advancement of knowledge and that the Research Program will be performed
in a manner best suited to carry out that mission. The manner of
performance of the Research Program shall respect this mission and shall
be determined jointly by the Principal Investigator and the Technical
Representative. SPONSOR acknowledges that UNIVERSITY does not guarantee
specific results.
1.3 UNIVERSITY shall promptly advise SPONSOR if for any reason the Principal
Investigator ceases to be available to work on the Research Program. If
UNIVERSITY and SPONSOR cannot agree on a qualified replacement scientist,
SPONSOR may terminate this Agreement on thirty (30) days written notice to
II. PERIOD OF PERFORMANCE
2.1 The Research Program shall be conducted during the twelve-month period
from October 1, 1999 through September 30, 2000; provided however, that
the parties may extend the term of the Research Program with the unanimous
agreement of UNIVERSITY, SPONSOR and the Principal Investigator.
III. COMPENSATION
3.1 In consideration of UNIVERSITY's agreement to undertake the Research
Program described in Exhibit A, SPONSOR will pay UNIVERSITY a total of
$165,368 during the term of the Research Program, to be expended in
accordance with the Budget Detail set forth in Exhibit B. The program
funds will be paid to UNIVERSITY in quarterly installments as set forth in
the following schedule of amounts and due dates:
October 1, 1999 $41,342 January 1, 2000 $41,342
April 1, 2000 $41,342 July 1, 2000 $41,342
Payments will be made in the name of "Trustees of Boston University," and
will be sent to Boston University, Grant Accounting, 25 Buick Street,
Boston, Massachusetts 02215. UNIVERSITY shall provide SPONSOR with a final
financial accounting of all costs incurred and all funds received by
UNIVERSITY under this section 3.1 within ninety (90) days after the
termination of this Agreement. UNIVERSITY shall enclose a check payable to
SPONSOR in the amount of any unexpended balance of such funds.
3.2 SPONSOR shall have title to all equipment purchased and/or fabricated by
UNIVERSITY with funds provided by SPONSOR under this Agreement. Promptly
after termination of this Agreement, SPONSOR shall direct UNIVERSITY
regarding the delivery of such equipment. SPONSOR shall bear any expenses
associated with such delivery, provided that UNIVERSITY complies with the
written instructions of SPONSOR.
IV. RECORDS, CONSULTATION AND REPORTS
4.1 UNIVERSITY will use its best efforts to ensure that its employees prepare
and maintain records, including bound laboratory notebooks maintained in
accordance with standard scientific procedures, containing all appropriate
data reflecting the results of the Research Program. During the
performance of the Research Program, the Technical Representative shall
have reasonable access to consult informally with the Principal
Investigator regarding the research, both personally and by telephone.
UNIVERSITY agrees to furnish SPONSOR, upon request, with reasonable
amounts of any biological, chemical or physical materials determined to be
necessary during the course of the Research Program ("Program Materials").
The Principal Investigator shall deliver a written report to the Technical
Representative every four (4) months during the period of performance of
the Research Program. A final report setting forth the significant
research findings shall be prepared by the Principal Investigator and
submitted to the SPONSOR within ninety (90) days following the expiration
of the term of this Agreement or the effective date of early termination
as set forth in Article XI.
V. PUBLICATION AND COPYRIGHTS
5.1 UNIVERSITY and its investigators will be free to publicly disclose
(through journals, lectures, or otherwise) the results of the Research
Program, provided that UNIVERSITY shall have provided a copy of the
proposed publication to SPONSOR at least sixty (60) days prior to the
intended submission of any written publication or any other public
disclosure to allow SPONSOR to determine whether any patentable invention,
trade secret or Confidential Information (Confidential Information as
defined in the Confidential Disclosure Agreement set forth in Exhibit C)
would be disclosed.
If the proposed disclosure contains a trade secret or Confidential
Information, UNIVERSITY shall remove or cause the author to remove such
trade secret or Confidential Information prior to its submission for
publication or other public disclosure. If the proposed disclosure would
disclose a patentable or potentially patentable invention, UNIVERSITY
shall, at the request of SPONSOR, delay or cause the author to delay
submission of the work for publication or other public disclosure for up
to an additional sixty (60) days to enable UNIVERSITY or SPONSOR to file a
patent application.
5.2 Title to any copyrights or copyrightable material produced or composed in
the performance of the Research Program shall remain with UNIVERSITY;
provided however, that UNIVERSITY shall grant to SPONSOR an irrevocable,
royalty-free, nontransferable, non-exclusive right to reproduce, translate
and use all such copyrightable material; except that such right with
respect to computer software and its programming documentation is
applicable only to computer software and its programming documentation, if
any, that is specified to be developed and delivered under the Research
Program Scope of Work, Exhibit A. UNIVERSITY shall not assign or license
its rights under such copyrights or copyrightable material without the
prior written consent of SPONSOR.
VI. CONFIDENTIAL AND PROPRIETARY INFORMATION/MATERIALS
6.1 SPONSOR may wish, from time to time, in connection with work contemplated
under this Agreement, to disclose Confidential Information (including
trade secrets) to UNIVERSITY personnel. To protect the confidentiality of
such information, SPONSOR will request the Principal Investigator and
other research personnel to sign confidentiality agreements with SPONSOR,
in a form the same as or similar to Exhibit C hereto.
6.2 In addition, from time to time, SPONSOR may provide UNIVERSITY personnel
Program Materials for use in the Research Program; such Program Materials
shall be proprietary to SPONSOR if they were developed prior to or outside
the performance of this Agreement. SPONSOR may request the Principal
Investigator and other research personnel to execute materials transfer
with SPONSOR that set forth the proprietary nature of such Program
Materials and restrictions on their use and disclosure by UNIVERSITY.
VII. PUBLICITY
7.1 Neither party shall use the name of the other party or of any investigator
or research personnel in any advertising or promotional material without
the prior written approval of the other, except that SPONSOR shall have
the right to indentify UNIVERSITY and to disclose the terms of this
Agreement in any prospectus, offering memorandum, or other document or
filing required by applicable securities laws or other applicable law or
regulation. SPONSOR may, and UNIVERSITY shall, however, acknowledge
SPONSOR's support for the investigations being pursued under this
Agreement. In any such statements, the relationship of the parties shall
be accurately and appropriately described.
VIII. INVENTIONS AND PATENTS
8.1 (a) Sponsor Inventions. SPONSOR shall own all rights in any inventions
------------------
discovered or conceived solely by its employees or consultants and
reduced to practice in the course of the Research Program without
significant use of UNIVERSITY facilities or equipment ("Sponsor
Inventions").
(b) University Inventions. UNIVERSITY shall own all rights in any
---------------------
inventions discovered or conceived solely by its employees in the
course of the Research Program ("University Inventions").
(c) Joint Inventions. SPONSOR and UNIVERSITY shall jointly own rights in
----------------
any inventions discovered or conceived jointly by an employee or
consultant of SPONSOR and an employee of UNIVERSITY; further, SPONSOR
and UNIVERSITY shall jointly own rights in any inventions discovered
or conceived solely by SPONSOR's employees or consultants and reduced
to practice in the course of the Research Program with significant
use of UNIVERSITY facilities or equipment ("Joint Inventions").
For the purposes of this Section 8.1, the term "significant use" shall
have the meaning set forth in the Boston University Patent Policy, Charles
River Campus (as amended, 11/12/91), a copy of which is attached as
Exhibit D. The term "inventions" shall include all discoveries (whether or
not patentable) that are discovered, conceived, or reduced to practice in
the course of the Research Program funded by SPONSOR, including but not
limited to processes, methods, formulae, and techniques.
8.2 (a) UNIVERSITY shall make prompt written disclosure to SPONSOR of any
University Inventions or Joint Inventions conceived, realized,
developed,
or reduced to practice during the course of the Research Program.
Such written disclosure shall be provided no later than thirty (30)
days from the date of such conception, realization, development, or
reduction to practice.
(b) Upon such written disclosure, SPONSOR shall have the right, at
SPONSOR's request and expense, to have UNIVERSITY file the necessary
papers for obtaining patent protection in any and all countries of
the world which SPONSOR, in its sole judgment, determines are of
sufficient interest to merit such filing.
(c) Patent applications relating to a University Invention shall be
filed, prosecuted and maintained by UNIVERSITY in its name, using
patent counsel reasonably acceptable to SPONSOR.
(d) Patent applications relating to a Joint Invention shall be filed,
prosecuted and maintained by SPONSOR using patent counsel reasonably
acceptable to UNIVERSITY.
(e) Patent applications relating to a Sponsor Invention shall be filed,
prosecuted and maintained by SPONSOR using patent counsel reasonably
acceptable to UNIVERSITY.
(f) Regarding patent applications under 8.2(c), 8.2(d) and 8.2(e), both
parties shall have the right to review and comment upon applications
and correspondence with the Patent Office and shall be provided with
drafts thereof sufficiently in advance to reasonably allow for such
review and comment.
(g) UNIVERSITY agrees that it will cause to be signed by concerned
UNIVERSITY personnel all documents of assignment or other documents
necessary to obtain patent protection as set forth above, and that
UNIVERSITY will do whatever SPONSOR reasonably requests to obtain and
maintain such patent rights, at the expense of SPONSOR.
(h) If SPONSOR elects not to have a patent application filed in any
country with respect to a particular University Invention or Joint
Invention, SPONSOR shall advise UNIVERSITY of such fact at least
ninety (90) days prior to any deadline for making such election.
UNIVERSITY may then, at its own expense, file and prosecute such
patent application, and such patent application and any patents
issuing therefrom shall not be included within the license option
granted to SPONSOR pursuant to section 8.3 of this Agreement, and
UNIVERSITY shall be free to license its rights in such patent to any
8.3 (a) UNIVERSITY hereby grants SPONSOR a first option to acquire a royalty
bearing, exclusive, worldwide license, including the right to
sublicense, to
make, have made, use, lease, sell, and offer for sale, products and
methods embodying or produced through the use of any University
Invention or Joint Invention. Said right must be exercised by written
notice to UNIVERSITY within ninety (90) days after receiving from
UNIVERSITY written disclosure of any University Inventions or Joint
Inventions as set forth in section 8.2(a).
(b) If SPONSOR elects to exercise any of its rights to acquire an
exclusive license under section 8.3(a) above, both parties agree that
the PATENT AND KNOW-HOW LICENSE AGREEMENT executed by the parties and
dated June 1, 1996 (attached hereto as Exhibit E) provides the
license terms for and will govern any exclusive license rights that
are elected and exercised pursuant to section 8.3(a). SPONSOR will
provide written notice to UNIVERSITY of its election of any rights
under this Agreement. For University Inventions or Joint Inventions
that SPONSOR does not elect to exercise its option rights to,
UNIVERSITY shall be free to license that particular invention to a
third party; provided however, that UNIVERSITY shall not grant any
rights in such invention on terms which, when taken in total, are
materially more favorable to the third party than those last offered
to SPONSOR by UNIVERSITY without first offering SPONSOR the
opportunity, for ninety (90) days from the date of any offer to a
third party, to meet the terms of such offer. If SPONSOR fails to
notify UNIVERSITY in writing within such ninety-day period that it
has accepted such terms, SPONSOR shall be deemed to have rejected the
offer, and UNIVERSITY may license its rights in such invention to
other parties. If SPONSOR notifies UNIVERSITY within such ninety-day
period that it accepts such offer, UNIVERSITY shall be deemed to have
entered into a binding license agreement with respect to such terms.
8.4 UNIVERSITY hereby grants SPONSOR a non-exclusive, world-wide, royalty-
free, perpetual license to use any results of the Research Program
(including without limitation all discoveries, data, Program Materials,
and University Inventions and Joint Inventions not exclusively licensed to
SPONSOR under section 8.3) for research purposes.
IX. LIABILITY
9.1 SPONSOR shall defend, indemnify and hold harmless UNIVERSITY, and its
trustees, officers, employees and agents and their respective successors,
heirs and assigns (the "Indemnitees"), against any and all liability,
damage, loss or expense (including reasonable attorneys' fees and expenses
of litigation) that may be incurred by or imposed upon Indemnitees, or any
of them, in connection with any claim, suit, demand, action or judgment
arising out of the design, production, manufacture, sale, use in commerce,
lease or promotion by SPONSOR or by an Affiliate or sublicensee of
SPONSOR, of any product, process or service relating
to or developed pursuant to this Agreement as long as such liability,
damage, loss, or expense, is not attributable to the willful misconduct of
the Indemnitees.
9.2 UNIVERSITY makes no warranties, express or implied, including, without
limitation, the condition of the research or any inventions or products
whether tangible, conceived, discovered, or developed under this
Agreement, and makes no warranties, express or implied, regarding
merchantability, or fitness for a particular purpose of the research, any
inventions, and any products under this Agreement. UNIVERSITY shall not be
liable for any direct, consequential, or other damages suffered by
SPONSOR, or any licensee of SPONSOR, or any others resulting from the use
of the research or any invention or product.
X. INDEPENDENT CONTRACTOR
10.1 For the purpose of this Agreement and all services to be provided
hereunder, the parties shall be, and shall be deemed to be, independent
contractors and not agents or employees of the other party. Neither party
shall have authority to make any statements, representations or
commitments of any kind, or to take any action which shall be binding on
the other party, except as may be explicitly provided for herein or
authorized in writing.
XI. TERM AND TERMINATION
11.1 Performance may be terminated by UNIVERSITY immediately upon written
notice to SPONSOR if circumstances beyond its control preclude
continuation of the Research Program. SPONSOR may terminate this Agreement
for any reason upon ninety (90) days written notice to UNIVERSITY.
11.2 In the event that either party shall be in default of any of its
obligations under this Agreement and shall fail to remedy such default
within sixty (60) days after receipt of written notice thereof, the party
not in default shall have the option of terminating this Agreement by
giving written notice thereof.
11.3 Termination or cancellation of this Agreement shall not affect the rights
and obligations of the parties accrued prior to termination. Upon any
termination hereof, UNIVERSITY shall be entitled to be compensated for all
reasonable expenses and uncancellable commitments incurred as of the
effective date of termination, not to exceed the total contract amount
stated in section 3.1 above.
11.4 Articles V, VI, VII, VIII, and IX and Sections 3.1 (the obligation for a
final accounting and refund), 3.2, 4.1 (the obligation for a final
report), 11.3, and 11.4, shall survive such termination.
XII. GENERAL
12.1 This Agreement may not be assigned by either party without the prior
written consent of the other party, except that SPONSOR may assign this
Agreement to an affiliate or to a successor in connection with the merger,
consolidation, transfer, or sale of all or substantially all of its assets
or that portion of its business pertaining to the subject matter of this
12.2 This Agreement constitutes the entire and only agreement between the
parties relating to the Research Program, and all prior negotiations,
representations, agreements and unders...
View agreement details