Option Agreement - Duke University and Celsion Corp.
OPTION AGREEMENT
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This AGREEMENT is made this 8th day of August, 2000, between Duke
University (hereinafter referred to as "University"), a university having an
office at Durham, North Carolina, and Celsion Corporation (hereinafter referred
to as "Celsion"), a company having an office at Columbia, MD.
WITNESSETH:
WHEREAS, University is the owner of certain Patent Rights and Technical
Data hereinafter defined, relating to compounds, assays, cell lines, and methods
useful in development of agents useful in gene therapy of cancer and other
diseases referred to collectively as ("Invention") and defined in detail
hereinafter; and
WHEREAS, Celsion wishes to obtain an option for a license under the
Patent Rights and Technical Data, and University is willing to make such
disclosure and to grant such option and license upon the terms and conditions
hereinafter set forth:
NOW, THEREFORE, in consideration of the mutual agreements hereinafter
set forth, the parties hereto do hereby mutually agree as follows:
1. Definitions: As used in this Agreement, the following terms
shall have the following meanings:
(a) "Patent Rights" shall mean any and all patents and any and all
rights, title and interest in applications for patents
relating to Invention owned, licensed or otherwise acquired by
University during the term of this Agreement throughout the
world, including all patents and reissue patents issuing on
said patent applications and any extensions, divisions,
continuations or continuations-in-part thereof.
(b) "Technical Data" shall mean all information, know-how and
inventions (including, but not limited to, patent
applications) disclosed by University to Celsion pursuant to
this Agreement and relating to the Invention.
(c) "Invention" shall include all Patent Rights and Technical Data
disclosed to University in connection with the Office of
Science & Technology Invention Disclosures File [OST File]
1519, "Selective express of genes in cancer cells". Invention
shall include additional Patent Rights and Technical Data
related to these OST Files that are developed by University
during the term of this Agreement.
(d) "Effective Date" shall mean 8 August, 2000.
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(e) "Option Period" shall mean a six (6) month period beginning on
the Effective Date.
2. Disclosure and Evaluation:
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(a) During the Option Period, University shall provide Celsion
with a copy of each U.S. or foreign Patent and each U.S. or
foreign Patent Application filed on the Invention and a
written disclosure of such Technical Data then possessed by
University relating to or relevant to the Invention.
University shall also disclose all relevant experimental data
to Celsion and disclose any relationships it, or to the best
of its knowledge, the researchers involved in the Invention
have with any other persons relating to the Invention or any
related technologies. Celsion shall, based upon such
disclosure, evaluate the technical, economic and commercial
advantages, in Celsion's option, of said Technical Data during
the Option Period.
(b) University shall also furnish to Celsion reasonable
opportunity to confer with University's research personnel on
the Invention and Technical Data. Celsion will pay
consultation fees and expenses to the inventors in the event
that travel to Celsion facilities is required.
(c) From time to time during the Option Period, University shall
augment its written disclosure with any additional Technical
Data to assure that Celsion has the most current information.
3. Option: University hereby grants to Celsion, and Celsion
hereby accepts, a non-assignable Option to negotiate with
University to obtain a worldwide, exclusive license under the
Patent Rights and Technical Data, said Option to be
exercisable by Celsion at any time during the Option Period
upon written notice to University. In the event that Celsion
shall exercise said Option, the parties agree to negotiate in
good faith towards license terms.
4. Consideration:
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(a) As consideration for the Option granted Celsion in Article 2
hereof, Celsion hereby agrees to reimburse all expenses
incurred by University during the Option Period in the pursuit
of a legal opinion regarding patent protection available for
the Invention. Celsion shall not be obligated to reimburse
University for such expenses in excess of two thousand five
hundred dollars [$2,500] during the Option Period. University
shall provide Celsion with a copy of said legal opinion.
(b) Celsion shall reimburse University for said patent expenses
relating to a legal opinion concerning patentability of the
invention within thirty (30) days of being invoiced by
University for such expenses.
(c) Any amount paid under this Article 3 shall not be refundable
under any circumstances.
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5. Termination:
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(a) If the Option granted by University pursuant to Article 4
hereof is not exercised by Celsion, this Agreement shall
terminate upon the expiration of the Option Period.
(b) Celsion may terminate the Option Period at any time by
notifying University of its decision not to exercise said
Option.
(c) In the event this Agreement is terminated in accordance with
the immediately preceding paragraphs, Celsion shall promptly
return to University any and all Technical Data.
6. Default:
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(a) If the Option granted by University pursuant to Article 4
hereof is not exercised by Celsion, this Agreement shall
terminate upon the expiration of the Option Period.
(b) Celsion may terminate the Option Period at any time by
notifying University of its decision not to exercise said
Option.
(c) In the event this Agreement is terminated in accordance with
the immediately preceding paragraphs, Celsion shall promptly
return to University any and all Technical Data.
7. Default: If Celsion shall fail to perform or fulfill at the
time and in the manner herein provided any obligation or
condition required to be performed or fulfilled by Celsion
hereunder, and if Celsion shall fail to remedy such default
within thirty (30) days after written notice thereof from
University, University shall have the right to terminate this
Agreement by written notice of termination to Celsion given at
any time within thirty (30) days thereafter. Any termination
of this Agreement pursuant to this Article shall be in
addition to, and shall not be exclusive of or prejudicial to,
any other rights or remedies at law or in equity that
University may have on account of the default of Celsion.
8. Governing Law: This Agreement shall be construed as having
been entered into in the State of North Carolina.
9. Non-Assignability: Any assignment by Celsion of this Agreement
or of any of the rights or licenses granted to it hereunder,
without the written consent of University, shall be void;
provided, however, that nothing contained herein shall
restrict the transfer of this Agreement as a part of a merger
or corporate acquisition to which Celsion may be a party.
10. Notices: It shall be a sufficient giving of any notice,
request, report, statement, disclosure or other communication
hereunder, if the party giving the same shall deposit a copy
thereof in the Post Office in certified mail, postage prepaid,
addressed to the other part at its address hereinafter set
forth or at such other address as the other party shall have
theretofore in writing designated:
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Duke University Celsion
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University Administrator Dr. Augustine Cheung, Chairman
Duke University Celsion Corporation
Office of Science and Technology 10220-1 Old Columbia Road
Box 90083/Room 234 North Building Columbia, MD 21046-1705
Durham, NC 27708
The date of giving any such notice, request, report, statement,
disclosure or other communication, and the date of making any payment
hereunder required (provided such payment is received), shall be the
U.S. postmark of such envelope if marked or actual date of receipt if
delivered otherwise.
11. Indemnification: Celsion agrees to indemnify University, its employees
and officers and to hold such parties harmless from any action, claim,
or liability, including without limitation liability for death,
personal injury, or property damage, arising directly or indirectly
from Celsion's possession, testing, screening, distribution or other
use of Patent Rights and/or Technical Data or distribution of test
reports, data, and other information relating to said items; provided,
however, this indemnification shall not apply if such action, claim or
liability is directly and principally caused by or the result of
negligence or the intentional acts of University. It is understood that
indemnification of University by licensee will be included in any
subsequent license agreements.
12. Non-Commercial Use: Celsion promises to allow use of Invention and
Technical Data only by its authorized personnel (including,
consultants, advisors, experts, attorneys and accountants) and only for
the purpose of ascertaining its interest in pursuing licensing
negotiations with University, and will not employ the Invention for any
gain prior to exercising its Option hereunder. Should Celsion market or
in any way make or use Invention in a way other than to ascertain its
interest in pursuing licensing negotiations, Celsion shall be liable to
University in damages.
13. Confidentiality: Celsion agrees to accept samples of the Invention and
Technical Data and/or information concerning the Invention and
Technical Data on a confidentiality of the Invention and any data that
is generated concerning it as it uses to protect its own confidential
information, and shall limit exposure of Invention and Technical Data
to those of its personnel, consultants, experts, attorneys,
accountants, potential investors and personnel of its affiliated
companies who have an actual need to know and who have an obligation to
protect the confidentiality of such information, Celsion agrees that
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Invention and all confidential information about Invention received and
generated under this Agreement shall be maintained in confidence for
the duration of this Agreement and for three (3) years thereafter
regardless of the manner of termination, and further agrees not to use
such confidential information for any purpose other than to assess its
interest in obtaining a license hereunder. The disclosure of
confidential information hereunder shall not result in any right or
license under any patent or know-how being granted to Celsion. All
written documents containing confidential information, together with
copies of excerpts thereof, shall promptly be returned to University by
Celsion upon request. Notwithstanding anything to the contrary herein,
any information, including information that may be considered to be
Technical Data or part of the Invention, that is or becomes generally
known to the public through no wrongful acts of Celsion shall not be
deemed to be confidential or proprietary and shall not be subject to
the confidentiality, use or other restrictions or obligations imposed
under this Agreement, including, but not limited to those obligations
set forth in this paragraph "Confidentiality" and the proceeding
paragraph "Non-Commercial Use".
14. Transfer: It is expressly agreed that neither Celsion nor University
transfers by operation of this Agreement any rights either party now
has or hereafter acquires in the Invention.
15. Use of University Name: It is agreed that in no circumstances shall
Celsion use the name of University or its employees in any
advertisement, press release, or publicity with reference to this
Agreement, without prior written approval of University. It is
anticipated and agreed to that Celsion may use the name of the
University in discussions with potential investors and partners
interested in the Invention.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the date and year firs written above.
DUKE UNIVERSITY: By:
Robert Taber, Director, Office of Science & Technology
CELSION: By:
Augustine Cheung, Chairman
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