This Research Collaboration Agreement (the “Agreement”), entered into as of the date of signature of both parties in the signature block below (the “Effective Date”), is entered into by and between Sysmex Inostics, Inc, a Nevada company, having a CLIA laboratory at 1812 Ashland Ave., Suite 500, Baltimore, MD 21205 (“Sysmex Inostics”), and ______, (“Collaborator”), a______ company/institution and having an office ______. Sysmex Inostics and _______ each shall be referred to herein as a “Party” and together as the “Parties”.
WHEREAS, Sysmex Inostics has been engaged in research and development related to analysis of genomic data obtained from next-generation sequencing techniques; and
WHEREAS, Collaborator shall provide certain samples and clinical information more fully described on Exhibit B hereto (the “Collatorator Materials”); and
WHEREAS, in furtherance of its business interests and in service to the community, Sysmex Inostics is willing to provide certain resources and personnel to collaborate and conduct the Study described herein and Collaborator is willing to provide certain resources and personnel to collaborate and conduct the Study described herein;
NOW, THEREFORE, in consideration of the premises and the mutual covenants herein contained, the Parties agree as follows:
Article 1. Definitions
1.1. “Affiliates” means with respect to a specified Party, any person or entity that, directly or indirectly, controls, is controlled by, or is under common control with such Party.
1.2. “Background IP” any and all intellectual property of any nature (including without limitation, patents, copyrights, trademarks, inventions, trade secrets, know how, industrial rights and all other intellectual and proprietary rights related thereto) that (i) is owned or licensed by a Party or its Affiliates prior to the Effective Date (“Pre-Existing IP”), (ii) a Party or its Affiliates (or their respective employees, designees or subcontractors) develops or acquires in the ordinary course of its business during the term of this Agreement and not specifically developed or acquired in connection with the Project (“Developed IP”) or (iii) is developed by a Party or its Affiliates during the term of this Agreement and comprises an improvement or logical extension of, or derivative work based upon, any of the Pre-Existing IP or Developed IP. For the avoidance of doubt, Sysmex Inostics’ Background IP shall include any and all reagents, assays and testing and diagnostic techniques, methodologies, practices and protocols of Sysmex Inostics or its Affiliates, including sequencing panels, protocols and methodologies related to library preparation and DNA sequencing (“Assays”) that qualifies as Pre-Existing IP or Developed IP as defined above.
1.3. “Confidential Information” has the meaning provided in Section 7.1.
1.4. “Intellectual Property” means collectively, all Patent Rights, rights to inventions, copyrights and related rights, and Know How rights, and all other intellectual property or intangible rights, in each case whether registered or unregistered and including all applications and rights to apply for and be granted, renewals or extensions of, and rights to claim priority from, such rights and all similar or equivalent rights or forms of protection.
1.5. “Know How” means all non-patented or unpublished proprietary technical data, drawings, documentation, and other such information and may include Study Information.
1.6. “Patent Rights” means (a) all patent applications filed or having legal force in any country, (b) all patents that have been issued or in the future will be issued from such applications, including without limitation, method, process, utility, model and design patents and certificates of invention, (c) all divisions, continuations, continuations-in-part (with respect to claims entitled to the original parent filing date), supplemental protection certificates, reissues, reexaminations, renewals, or extensions to any such patent applications and patents.
1.7. “Study Information” means all tangible and intangible information, data, results and conclusions generated by Sysmex Inostics or Collaborator in the performance of the Study.
1.8. “Study” is described herein and attached as Exhibit A labeled Study Details.
1.9. “Study Inventions” means any inventions, discoveries or improvements that are conceived or reduced to practice in the performance of the Study or with the use of Study Information.
1.10. “Term” has the meaning given in Section 8.1.
1.11. “Third Party” means a person or entity other than a Party or an Affiliate of a Party.
Article 2. Collaboration
2.1. Coordination. Collaborator and Sysmex Inostics will coordinate as described in the Study Details.
2.2. Delivery of Collaborator Materials. Collaborator agrees to transfer to Sysmex Inostics the Collaborator Materials in consideration for Sysmex Inostics’ performance of its services in connection with the Study. Collaborator agrees to comply with all local, state, and federal laws, rules, and regulations applicable to the shipping and handling of the Collaborator Materials. Collaborator agrees to provide Sysmex Inostics with all information related to the safe handling, shipping, storage, and use of the Collaborator Materials. Collaborator represents, certifies, and covenants that (a) all Collaborator Materials provided to Sysmex Inostic under this Agreement will have been obtained under informed patient consent and with approval of all applicable research oversight committees, such as Institutional Review Boards, for use by Sysmex Inostics consistent with this Agreement, (b) the Collaborator Materials are the property of Collaborator and/or that Collaborator is rightfully in the possession of the Collaborator Materials and that the transfer to, and use by, Sysmex Inostics and its Affiliates thereof does not violate or infringe on the rights of any third party, and (c) all Collaborator Materials provided to Sysmex Inostics will be de-identified, anonymized and will not contain personally identifiable patient information.
2.3. Facilities. Each Party will be responsible for all costs and expenses of its own facilities and personnel.
Article 3. Use
3.1. Care in Use. Each Party acknowledges that the materials and methods of the collaboration are experimental in nature and may have unknown characteristics and therefore agrees to use prudence and reasonable care in the use, handling, storage, transportation and disposition and containment of any physical samples.
Article 4. Intellectual Property
4.1. Background IP. Each Party owns and shall retain all right, title, and interest, ownership and control of such Party’s Background IP. Neither Party grants the other Party any rights to or under the first Party’s Background IP under this Agreement.
4.2. Sysmex Inostics Study Inventions. The entire right, title and interest in and to all Study Inventions invented in whole or in part by Sysmex Inostics, or that are dependent on Sysmex Inostics’ patent claims or Collaborator’s access to Sysmex Inostics’ Confidential Information (collectively, “Sysmex Inostics Study Inventions”), shall be owned solely by Sysmex Inostics. Collaborator hereby assigns and agrees to assign to Sysmex Inostics its rights in and to all Sysmex Inostics Study Inventions. Collaborator agrees to execute and deliver all documents and take all reasonable and lawful actions, at Sysmex Inostics’s expense, to assist Sysmex Inostics to evidence or record such assignment.
4.3. Other Study Inventions. All other Study Inventions ("Other Study Inventions") that are developed solely by Collaborator shall be owned by Collaborator. All Other Study Inventions developed by one or more employees of both Sysmex Inostics and Collaborator under this Agreement shall be owned jointly by Sysmex Inostics and Collaborator. Collaborator shall inform Sysmex Inostics promptly of such Other Study Inventions developed by Collaborator. [Collaborator shall grant Sysmex Inostics an option to negotiate to obtain an exclusive, royalty bearing, worldwide license, including the right to sublicense, to make, have made, use, and sell products incorporating such sole Other Study Inventions or Collaborator’s rights to jointly owned Other Study Inventions. Sysmex Inostics’ option may be exercised at any time during a period of ninety (90) days (the "Option Period") after the written submission to Sysmex Inostics of each such Other Study Invention, by the Sysmex Inostics providing notice of such election in writing to Collaborator. Upon Sysmex Inostics’ exercise of its option with regard to any particular Other Study Invention, Collaborator and Sysmex Inostics will negotiate in good faith in an attempt to reach a license agreement satisfactory to both Parties (the "Negotiation Period"). Unless extended by the written mutual consent of the Parties, the Option Period and the Negotiation Period shall not exceed ten (10) months in the aggregate. Upon the expiration of the unexercised option or the Negotiation Period, Collaborator shall have no further obligation to Sysmex Inostics under this Agreement with regard to specific Other Study Inventions under consideration. [Sysmex Inostics shall promptly inform Collaborator of such Other Study Inventions developed by Sysmex Inostics and will grant Collaborator a royalty-free, non-exclusive, non-transferable, non-sublicenseable license to use Sysmex Inostics’ rights in Other Study Inventions for internal research, patient care and treatment, and publication purposes (subject to Section 4.6) and educational purposes.]
4.4. No License or Grant of Rights. Nothing in this Agreement shall be construed to confer any ownership interest, license or other rights upon Collaborator or its Affiliates by implication, estoppel or otherwise as to any technology, intellectual property rights, products or biological materials of Sysmex Inostics or any other entity. No rights are granted by either Party to the other Party under any of such Party’s Background IP.
4.5. Disclosure of Study Inventions. Collaborator shall notify Sysmex Inostics, promptly and in writing, of any Study Invention of which it becomes aware.
4.6. Study Information. As between the Parties, all Study Information shall be owned solely by Sysmex Inostics. [Collaborator shall have the right to use the Study Information for its own internal non-commercial purposes in a manner consistent with the terms of this Agreement and the approved protocol and informed consent under which the Collaboratoor Materials were collected, and is granted a non-exclusive, royalty-free license to use the Study Information for such purposes.] Notwithstanding the ownership of the Study Information, the Parties will seek to publish a manuscript as described in the Study Details at the conclusion of the Study, to be mutually agreed upon prior to manuscript submission. For clarity, any information included in a published manuscript agreed to by both Parties is no longer Confidential Information upon publication.
Article 5. Patent Filing and Prosecution.
5.1. Sysmex Inostics Patents. As between the Parties, Sysmex Inostics shall be solely responsible for the preparation, filing, prosecution and maintenance of patents and patent applications relating to any Sysmex Inostics Study Inventions.
Article 6. Financial Terms.
6.1. Compensation. Collaborator will receive ___ number of FREE Plasma-Safe-SeqS sample runs and results from Sysmex Inostics to complete the Study described in the Study Details. Except as provided in the immediately preceding sentence, Collaborator shall not be entitled to any other fees or other compensation in consideration for its performance of its obligations under this Agreement.
Article 7. Confidential Information.
7.1. Definition. “Confidential Information” shall mean all information that is marked as confidential (or, if disclosed orally or in intangible form, that is summarized in a writing that is marked as confidential and delivered to the recipient within thirty (30) days after disclosure), or if not so marked or summarized which the receiving Party knows or should reasonably be expected to know of its confidential nature, except to the extent that such information:
(i) was known to the recipient at the time it was disclosed, other than by previous confidential disclosure by or on behalf of the discloser, as evidenced by written records at the time of disclosure;
(ii) is at the time of disclosure or later becomes publicly known under circumstances involving no breach of this Agreement; or
(iii) is lawfully made available to the recipient by a Third Party that is not subject to obligations of confidentiality to the discloser with respect to such information.
A Party may disclose Confidential Information of the other Party to the extent it is required to be disclosed by law, government regulation, or court order; provided that, to the extent reasonably possible, such Party provides prior written notice to the other Party of such requirement and cooperates with the other Party at the other Party’s request and expense in any attempts to obtain a protective order or confidential treatment.
7.2. Obligations. Collaborator and Sysmex Inostics each agree that, without the prior written consent of Sysmex Inostics (in the case of Collaborator being the recipient) or Collaborator (in the case of the Sysmex Inostics being the recipient) in each case, during the Term, and for five (5) years thereafter, it (a) will not disclose Confidential Information that it/he has received hereunder to any Third Party and (b) will not use Confidential Information that it has received hereunder except for the purposes of performing the Study. Collaborator and Sysmex Inostics each shall treat Confidential Information that it has received hereunder with the same degree of confidentiality as it treats its own confidential and proprietary information, but in all events no less than a reasonable degree of confidentiality.
Article 8. Term, Termination, and Study Termination.
8.1. Term. This Agreement shall remain in effect for two (2) years from the Effective Date, unless earlier terminated.
8.2. Termination for Breach; Cure Period. Upon the occurrence of a material breach of this Agreement, the other Party shall have the right to terminate this Agreement by providing written notice to the breaching party; provided that such breach has not been cured within thirty (30) days advance written notice to the breaching Party; except, such termination shall not take effect if the breaching Party cures such breach prior to the expiration of the thirty (30) day period.
8.3. Effect of Expiration or Termination. Upon expiration of this Agreement or any Termination: each Party will return or destroy any physical samples or Confidential Information of the other Party promptly upon the other Party’s request.
8.4. Survival. Sections 4, 5, 7, 9, and 10 shall survive any termination of this Agreement.
Article 9. Representations and Waiver of Warranties.
9.1. Each Party represents that it has full power and authority to execute, deliver and perform this Agreement and to perform its obligations hereunder.
9.2. Waiver of Warranties. SYSMEX INOSTICS SUPPLIES ALL INFORMATION AND MATERIALS WITHOUT ANY WARRANTY, REPRESENTATION OR UNDERTAKING WHATSOEVER, EXPRESSED OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, ANY WARRANTY RESPECTING THE EFFICIENCY, PERFORMANCE, WORKMANSHIP, CONDITION, MERCHANTABILITY, FITNESS FOR PARTICULAR PURPOSE, OR NONINFRINGEMENT.
Article 10. Indemnification.
10.1. Responsibilities. Each Party shall be responsible for its own acts in the performance of the Study and use of Information related thereto.
10.2. Indemnification. Each Party shall indemnify, defend and hold harmless the other Party and its Affiliates and their respective current and former directors, officers, employees, agents and representatives and their respective successors, heirs and assigns from and against any Third Party claim, liability, cost, expense, damage, deficiency, loss or obligation of any kind or nature (including, without limitation, reasonable attorneys' fees and other costs and expenses of litigation) based upon, arising out of or resulting from: (a) the indemnifying Party’s material breach of its representations or warranties made under this Agreement, (b) the indemnifying Party’s negligence, gross negligence or willful misconduct in its performance of the Study, and (c) the indemnifying Party’s use of the results of the Study, including without limitation any cause of action relating to product liability, except to the extent that such Third Party liability is directly caused by the negligence, gross negligence or willful misconduct of the other Party.
10.3. Limitation of Liability. Without prejudice to a Party’s indemnification obligations herein, neither Party will be liable to the other Party for special, indirect, incidental, punitive or consequential damages arising out of or relating to this Agreement or loss of profits or loss of opportunity even if deemed direct damages, whether in contract, warranty, negligence, tort, strict liability or otherwise, even if such Party has been advised of the possibility thereof.
Article 11. Miscellaneous.
11.1. Use of Name. Neither Party shall employ or use the name, acronym, or logo of the other Party or any of its Affiliates in any promotional materials or advertising without the prior express written permission of the other Party; nor shall either Party originate any publicity, news release, or other public announcement relating to this Agreement or to performance hereunder or the existence of this Agreement, except as required by law, without the prior express written permission of the other Party.
11.2. Relationship of the Parties. Sysmex Inostics, for all purposes related to this Agreement, shall be deemed an independent contractor of Collaborator and nothing in this Agreement shall be deemed to create a relationship of employment or agency or to constitute the Parties as partners or joint venturers.
11.3. Force Majeure. Except for the payments to be made under this Agreement, neither Party shall be liable for any delay or failure to perform as required by this Agreement, to the extent such delay or failure to perform is caused by any force beyond the Party’s reasonable control, or by reason of any of the following: labor disturbances or disputes of any kind, accidents, failure of any required governmental approval, civil disorders, acts of aggression, acts of God, failure of utilities, mechanical breakdowns, material shortages, disease, or similar force majeure events.
11.4. Assignment. Neither Party shall assign this Agreement without the prior written consent of the other, and any purported assignment without such consent shall be void ab initio, provided, however, that Sysmex Inostics may assign this Agreement to an Affiliate or to an acquirer of all or substantially all of the assets or business of Sysmex Inostics to which this Agreement relates without Collaborator’s written consent. The terms of this Agreement shall be binding upon and inure to the benefit of any successors in interest and permitted assigns of Sysmex Inostics and Collaborator.
11.5. Severability. In the event that a court of competent jurisdiction holds any provision of this Agreement to be invalid, such holding shall have no effect on the remaining provisions of this Agreement, and they shall continue in full force and effect.
11.6. Entire Agreement; Amendments. This Agreement, including Exhibit A hereto, constitutes the entire understanding and agreement between the Parties with respect to the subject matter hereof. In the event of any inconsistency between the terms set forth in the body of this Agreement and those set forth in any exhibit, the terms of this Agreement shall control. No amendments or modifications to this Agreement (including Exhibit A) shall be effective unless made in writing and signed by authorized representatives of both Parties.
11.7. Governing Law. This Agreement shall be governed by and construed in accordance with the laws of the State _____, without regard to choice of law provisions.
11.8. Dispute Resolution. The Parties recognize that a dispute may arise relating to this Agreement (“Dispute”). Any Dispute, including Disputes that may involve a Party’s Affiliates, shall be subject to the exclusive jurisdiction and venue of the state and federal courts of the State of Delaware and the Parties consent to the personal and exclusive jurisdiction and venue of these courts.
11.9. Integration. Collaborator and Sysmex Inostics agree that this Agreement constitutes the entire understanding of the Parties with respect to the subject matter hereof. This Agreement shall supersede any additional or conflicting terms and conditions contained in any acknowledgment, purchase order (PO) or other document that may be issued or provided under this Agreement (other than an amendment duly executed by the Parties) with the result that any terms and conditions therein shall be considered null and void.
11.10. Counterparts. This agreement may be signed in one or more counterparts, each of which is considered an original.
IN WITNESS WHEREOF, the Parties hereto have executed this Agreement by their duly authorized officers or representatives.
Sysmex Inostics, Inc.
By:
Date:
Name:
Title:
_________
By:
Date:
Name:
Title: