Sponsored Research Agreement - Boston University and Sequenom Inc.
SPONSORED RESEARCH AGREEMENT
THIS AGREEMENT, effective as of September 15, 1994 (the "Effective Date"), is
made by and between the TRUSTEES OF BOSTON UNIVERSITY (hereinafter referred to
as "UNIVERSITY") having an address at 881 Commonwealth Avenue, Boston,
Massachusetts 02215 and Sequenom, Inc., a corporation organized under the laws
of Delaware, whose address is c/o Techno Venture Management, 101 Arch Street,
Suite 1950, Boston, Massachusetts 02110 (hereinafter referred to as "SPONSOR").
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")
described in the attached Exhibit A, "Statement of Work," and will furnish the
facilities 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
UNIVERSITY.
II. PERIOD OF PERFORMANCE
The Research Program shall be conducted during the twelve-month period from
September 15, 1994 through September 14, 1995; provided, however, that the
parties may extend the term of the Research Program with the unanimous agreement
of UNIVERSITY, SPONSOR and the Principal Investigator.
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III. COMPENSATION
3.1 in consideration of UNIVERSITY's agreement to undertake the research
described in Exhibit A, SPONSOR will pay UNIVERSITY a total of *** during the
term of the Research Program, to be expended in accordance with the budget set
forth on Exhibit F. The program funds will be paid to UNIVERSITY in installments
as set forth in the following schedule of amounts and due dates:
*** *** *** ***
*** *** *** ***
Portions of this page have been omitted pursuant to a request for Confidential
Treatment and filed separately with the Commission. 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 tide to all equipment purchased and/or fabricated by
UNIVERSITY with funds provided by SPONSOR under this Agreement. Promptly after
termination of the 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, reasonable under the circumstances,
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 ("Materials") arising in 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.
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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 or Confidential Information (as defined in the form of
confidentiality agreement set forth on Exhibit B) would be disclosed.
If the proposed disclosure contains Confidential Information, UNIVERSITY
shall remove or cause the author to remove such Confidential Information prior
to its submission for publication or other public disclosure. If the proposed
disclosure would disclose a 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 first 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 specified to be
developed and delivered under the Statement 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 INFORMATION AND PROPRIETARY MATERIALS
SPONSOR may wish, from time to time, in connection with work contemplated under
this Agreement, to disclose confidential information to UNIVERSITY personnel.
To protect the confidentiality of such information, SPONSOR may request the
Principal Investigator and other research personnel to sign confidentiality
agreements with SPONSOR, in the form of Exhibit B hereto.
In addition, from time to time, SPONSOR may provide UNIVERSITY personnel with
Materials for use in the Research Project; such Materials shall be proprietary
to SPONSOR if they were developed prior to or outside the performance of this
Agreement ("Proprietary Materials"). SPONSOR may request the Principal
Investigator and other research personnel to execute materials transfer
agreements with SPONSOR.
Except as otherwise provided in Section 5. 1, UNIVERSITY will not be responsible
for any failure of individual performance under such confidentiality and
materials transfer agreements.
VII. PUBLICITY
Neither party shall use the name of the other party or of any investigator in
any advertising or promotional material without the prior written approval of
the other, except that SPONSOR shall
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have the right to identify 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,
provided that SPONSOR shall have given UNIVERSITY at least five (5) days prior
written notice of the proposed text of any such identification or disclosure for
the purpose of giving UNIVERSITY the opportunity to comment on such proposed
text. 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.
VII. INVENTIONS AND PATENTS
8.1 SPONSOR shall own all rights in any Inventions discovered or conceived
solely by its employees or consultants and first reduced to practice in the
course of the Research Program without any significant use of UNIVERSITY
facilities or equipment ("Sponsor Inventions"). UNIVERSITY shall own all rights
in any Inventions either (i) discovered or conceived solely by its employees or
(ii) first reduced to practice in the course of the Research Program with
significant use of UNIVERSITY facilities or equipment ("University 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 and first reduced to practice in the course of the Research Program
without any 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 E.
The term "Inventions" shall include all discoveries or inventions (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, formulas and techniques.
8.2 (a) UNIVERSITY shall make prompt written disclosure to SPONSOR of any
Invention made by UNIVERSITY personnel or jointly by UNIVERSITY personnel and
SPONSOR personnel during the course of the Research Program.
(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 as mutually agreed by the parties, and
UNIVERSITY and SPONSOR shall together select independent patent counsel
satisfactory to both parties to prepare and prosecute any such application(s).
(e) Patent applications relating to a Sponsor Invention shall be filed,
prosecuted and maintained by SPONSOR using patent counsel reasonably acceptable
to UNIVERSITY.
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(f) As regards 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 within ninety (90) days from the
date the Invention was disclosed to SPONSOR by UNIVERSITY. 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(a) of this Agreement,
and UNIVERSITY shall be free to license its rights in such patent to any party.
8.3 (a) UNIVERSITY hereby grants SPONSOR a first option to acquire ***
***
*** Said right must be exercised
by written notice to UNIVERSITY within six (6) months after receiving from
UNIVERSITY written notice of the filing of a patent application describing such
Invention.
(b) UNIVERSITY hereby grants SPONSOR a first option to acquire ***
***
***
*** Said right must be exercised
by written notice to UNIVERSITY and shall remain in effect during the term of
this Agreement and thereafter for a period of six (6) months.
(c) UNIVERSITY hereby grants SPONSOR a first option to acquire ***
***
*** Said right must be exercised
by written notice to UNIVERSITY and shall remain in effect during the term of
this Agreement and thereafter for a period of six (6) months.
(d) If SPONSOR elects to exercise any of its rights to acquire *** license
under Sections 8.3(a), 8.3(b), or 8.3(c) above, both parties agree to negotiate
mutually agreeable license terms in good faith. Any negotiations regarding a
particular invention, including the execution of an agreement, shall be
completed within six (6) months of written notice to UNIVERSITY of SPONSOR's
exercise of its option for such invention. If the parties fail to agree to the
terms and conditions of such license agreement within the six-month negotiation
period, UNIVERSITY shall be free to license that particular invention to a third
party; provided, however, that for a period of three (3) years after the six-
month negotiation period, UNIVERSITY shall not grant
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any rights in such invention without first offering SPONSOR the opportunity for
ninety (90) days from the date of the offer to meet the terms of such proposed
grant of rights. 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 and SPONSOR agree that the terms set forth on Exhibit D are
mutually agreeable and shall be included in any license granted to SPONSOR
pursuant to paragraph 8.3.
8.5 UNIVERSITY hereby grants SPONSOR a non-exclusive, worldwide, royalty-free,
perpetual license to use any results of the Research Program (including without
limitation all discoveries, data, Program Materials, and Inventions not
exclusively licensed to SPONSOR under Section 8.3) for internal 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 the Indemnitees, or any of them, in
connection with any claim, suit, demand, action or judgment arising out of the
following:
(a) 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; or
(b) any other activities to be carried out pursuant to this Agreement.
SPONSOR's indemnity under (a) shall apply to any liability, damage, loss or
expense whether or not it is attributable to the negligent activities of the
Indemnitees. SPONSOR's indemnification under (b) shall not apply to any
liability, damage, loss or expense to the extent that it is attributable to the
negligence or willful misconduct of the Indemnitees.
9.2 UNIVERSITY makes no warranties, express or implied, as to any matter
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whatsoever, including without limitation, the condition of the research or any
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invention(s) or product(s). Whether tangible, conceived, discovered, or
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developed under this Agreement; or the merchantability, or fitness for a
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particular purpose of the research or any such invention or product. UNIVERSITY
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shall not be liable for any direct, consequential, or other damage suffered by
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SPONSOR, any licensee, or any others resulting from the use of the research or
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any such invention or product.
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X. INDEPENDENT CONTRACTOR
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. TERMS 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 3.1
above.
11.4 Articles V, VII, VIII and IX and Sections 3.1 (the obligation for a final
accounting and refund), 3.2 and 4.1 (the obligation for a final report) 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 or sale of all or substantially all of its assets or that portion
of its business pertaining to the subject matter of this Agreement.
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 understandings are superseded hereby. No
agreements altering or supplementing the terms hereof may be made except by
means of a written document signed by the duly authorized representatives of the
parties.
12.3 Any notice required by this Agreement shall be sufficiently given (i) upon
the date of receipt if delivered by hand, recognized national overnight courier,
confirmed facsimile transmission, or registered or certified mail, return
receipt requested, postage prepaid, or (ii) on
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the third business day after mailing by first class mail, postage prepaid, to
the following addresses or facsimile numbers:
If to UNIVERSITY:
Boston University
Attention: Maureen Rodgers
Office of Sponsored Programs
25 Buick Street
Boston, MA 02215
Tel: (617) 353-4365
Fax: (617) 353-6660
If to SPONSOR:
Dr. Hubert Koster
SEQUENOM, Inc.
c/o TVM Techno Venture Management
101 Arch Street, Suite 1950
Boston, MA 02110
Tel: (617) 345-9320
Fax: (617) 345-9377
with a copy to:
SEQUENOM, Inc.
c/o TVM Techno Venture Management
101 Arch Street, Suite 1950
Boston, MA 02110
Attention: President
Tel: (617) 345-9320
Fax: (617) 345-9377
or at such other addresses or facsimile numbers as may be designated by notice
given from time to time under the terms of this provision.
12.4 This Agreement shall be construed and enforced in accordance with the laws
of the Commonwealth of Massachusetts.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be executed by
their duly authorized representatives:
TRUSTEES OF BOSTON UNIVERSITY
By: /s/ John F. Imbergamo
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Printed Name: John F. Imbergamo
Title: Comptroller
SEQUENOM, INC.
By: /s/ illegible
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Printed Name:
Title:
I have read the foregoing Agreement and agree to comply with its terms.
By: /s/ Charles R. Cantor
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Printed Name: Charles R. Cantor
Title: Principal Investigator
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EXHIBIT A
STATEMENT OF WORK
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EXHIBIT B
CONFIDENTIAL DISCLOSURE AGREEMENT
This Agreement, dated as of _______________, is between [Name of
Investigator] and Sequenom, Inc.
In connection with the conduct of a research program pursuant to a
Sponsored Research Agreement dated as of December 1, 1994 among Sequenom, Inc.,
Charles Cantor and Boston University (the "Sponsored Research Agreement"), each
party may furnish to the other party certain confidential information relating
to its business for the sole purpose of conducting this research program.
Accordingly, the parties hereby agree as follows:
1. For purposes of this Agreement, the term "Confidential Information"
means any technical or business information furnished by one party (the
"Disclosing Party") to the other party (the "Receiving Party") in connection
with the research program under the Sponsored Research Agreement and
specifically designated as confidential. Such Confidential Information may
include, without limitation, trade secrets, know-how, inventions, technical data
or specifications, testing methods, business or financial information, research
and development activities, product and marketing plans, and customer and
supplier information. Confidential Information that is disclosed in writing
shall be marked with a legend indicating its confidential status. Confidential
Information that is disclosed orally or visually shall be documented in a
written notice prepared by the Disclosing Party and delivered to the Receiving
Party within thirty (30) days of the date of disclosure; such notice shall
summarize the Confidential Information disclosed to the Receiving Party and
reference the time and place of disclosure.
2. With respect to all Confidential Information furnished by the
Disclosing Party to the Receiving Party, the Receiving Party agrees that it
shall
a. maintain such Confidential Information in strict confidence;
b. not disclose or permit the disclosure of such Confidential
Information to any persons other than to persons who are obligated to maintain
the confidential nature of such Confidential Information and who need to know
such Confidential Information for the purposes set forth in the Sponsored
Research Agreement;
c. use such Confidential Information solely for the purpose set forth
in the Sponsored Research Agreement;
d. reproduce the Confidential Information only to the extent
necessary to effect the purposes set forth in the Sponsored Research Agreement,
with all such reproductions being considered Confidential Information.
3. The obligations of the Receiving Party under Section 2 above shall not
apply to the extent that the Receiving Party can demonstrate that certain
Confidential Information:
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a. was in the public domain prior to the time of its disclosure;
b. entered the public domain after the time of its disclosure through
means other than an unauthorized disclosure resulting from an act or omission by
the Receiving Party;
c. was independently developed or discovered by the Receiving Party
at any time, whether before or after the time of its disclosure under this
Agreement;
d. is or was disclosed to the Receiving Party at any time, whether
prior to or after the time of its disclosure under this Agreement, by a third
party having no fiduciary relationship with the Disclosing Party and having no
obligation of confidentiality with respect to such Confidential Information; or
e. is required to be disclosed to comply with applicable laws,
governmental regulations or court orders, provided that the Disclosing Party
receives prior written notice of such disclosure and that the Receiving Party
takes all reasonable and lawful actions to obtain confidential treatment for
such disclosure and, if possible, to avoid such disclosure.
4. The Receiving Party agrees that the Disclosing Party (or any third
party entrusting its own Confidential Information to the Disclosing Party) is
and shall remain the exclusive owner of the Confidential Information disclosed
by the Disclosing Party and all patent, copyright, trademark, trade secret, and
other intellectual property rights in such Confidential Information or arising
therefrom. No option, license, or conveyance of such rights to the Receiving
Party is granted or implied under this Agreement. If any such rights are to be
granted to the Receiving Party, such grant shall be expressly set forth in a
separate written instrument.
5. Upon the termination by either party of the Sponsored Research
Agreement, the Receiving Party shall return to the Disclosing Party all
originals, copies, and summaries of documents, materials, and other tangible
manifestations of Confidential Information in the possession or control of the
Receiving Party, except that the Receiving Party may retain one copy of such
information with its legal counsel solely for the purpose of documenting its
obligations under this Agreement.
Acknowledged and agreed:
SEQUENOM, INC.
By:_______________________________ _____________________________________
Name: [Name of Investigator]
Title:
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EXHIBIT C
PRIOR INVENTIONS
Exhibit C-1: ***
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Exhibit C-2: ***
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Exhibit C-1
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Exhibit C-2
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EXHIBIT D
TERMS OF LICENSE AGREEMENT
1. The Agreement shall be subject to the Boston University Patent Policy,
Charles River Campus, and to agreements with other sponsors of research
that are promptly disclosed to SPONSOR.
2. SPONSOR shall pay UNIVERSITY a royalty on net sales of chip-based products
("Licensed Products") as follows:
a) ***
b) ***
c) ***
Such Licensed Products are intended to be the source of the nucleic acids
used with the *** instrument. To the extent that SPONSOR itself
uses a Licensed Product after it becomes commercially available, SPONSOR
shall treat such Licensed Product as sold at its fair market value.
3. If SPONSOR must pay license fees or royalties to third parties on a
Licensed Product, SPONSOR may credit against any amounts due UNIVERSITY a
total of *** of such third-party payments, provided that in no
event shall any payment otherwise due UNIVERSITY be reduced by more than
***
4. Control over, and associated expenses for, the filing, prosecution, and
maintenance of patents and patent applications relating to inventions
licensed under Section 8.3(a) will be allocated as set forth in Section 8.2
of the Sponsored Research Agreement. Upon execution of a License
Agreement, SPONSOR shall reimburse UNIVERSITY for reasonable expenses
incurred in relation to the filing, prosecution, and maintenance of patents
and patents applications relating to inventions licensed under Sections
8.3(b) and 8.3(c). In the event that UNIVERSITY obtains additional
licensees under any invention licensed by SPONSOR, SPONSOR shall pay only
its pro-rata share of patent-related expenses. SPONSOR may credit against
any amounts due UNIVERSITY a total of *** of expenses relating to
patent filings, prosecution, and maintenance for the licensed invention(s),
provided that in no event shall any payment otherwise due UNIVERSITY be
reduced by more than *** SPONSOR shall have the right to cease
paying for the filing, prosecution, or maintenance of any patent or patent
applications in any country upon thirty (30) days prior written notice to
UNIVERSITY. In such event, SPONSOR will have no further rights under the
Agreement with respect to such patents or patent applications in such
country, and
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SPONSOR agrees to assign to UNIVERSITY any rights SPONSOR may have in such
patents or patent applications in such country.
5. SPONSOR shall have the right to prosecute any infringement of the licensed
inventions, and to offset *** of the expenses incurred in such
action against any amounts due UNIVERSITY, provided that in no event shall
any payment otherwise due UNIVERSITY be reduced by more than ***
Any recovery obtained in such action shall be distributed in the following
order of precedence: (1) UNIVERSITY will be reimbursed for any withheld
payments, (2) SPONSOR will be reimbursed for its expenses, (3) UNIVERSITY
will be paid a reasonable approximation of its royalty on lost sales of
Licensed Products, and (4) SPONSOR will retain any remaining amounts except
with respect to punitive or other extraordinary damages, which shall be
distributed *** to SPONSOR and *** to UNIVERSITY.
6. SPONSOR shall have the right to defend against any claim of infringement
based on the exercise of its rights under the Agreement or any claim of
invalidity or unenforceability of any patents covering the licensed
inventions. SPONSOR may offset *** of the expenses incurred in
such action against any amounts due UNIVERSITY. UNIVERSITY shall have the
right, at its expense, to intervene and assume control of such action.
SPONSOR may not settle such action without the consent of UNIVERSITY, which
consent shall not be unreasonably withheld or delayed.
7. UNIVERSITY and its affiliated hospitals shall retain a *** license, without
the right to sublicense, to use the invention solely for noncommercial
research purposes.
8. If and to the extent applicable to the invention, the rights of the United
States of America as set forth in Public Laws 96-517 and 98-620 (codified
at 35 U.S.C. 200 et seq.) are specifically reserved, and SPONSOR shall
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comply with the provisions of 35 U.S.C. 204, as amended from time to time.
9. The Agreement shall provide for termination in the event that SPONSOR has
not introduced Licensed Products into public use, or is not actively
seeking to do so, within a reasonable time period. SPONSOR shall have the
right to terminate the Agreement for any reason upon written notice to
UNIVERSITY. Either party may terminate the Agreement with written notice
in the event of a material breach by the other party.
10. The Agreement shall provide for product liability indemnification and
insurance requirements which are acceptable to the UNIVERSITY's Risk
Management Office.
11. Upon the expiration of the last to expire of the patents covering all
licensed inventions, SPONSOR shall have a paid up license under the
licensed inventions.
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EXHIBIT E
PATENT POLICY
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Boston University Patent Policy
CHARLES RIVER CAMPUS
_____________________________________________________________________________
PREAMBLE
The patent policy outlined herein is the Policy of the Trustees of Boston
University (the "University"). The University recognizes that patentable
inventions may be made in the course of research sponsored by the University
and/or by others through the University. It is the policy of the University to
maximize the benefits to the individual who makes such patentable inventions, to
the University and to the general public, and thus to stimulate initiative in
the faculty, staff, and employees of the University. The University recognizes
that this may best be accomplished through patenting and licensing such
inventions in a manner consistent with the public interest, and for such purpose
the University hereby establishes the patent policy set forth herein. This
Policy supersedes all prior patent policies and amendments thereto applicable to
the Charles River Campus.
1. PATENT POLICY
A. In order to protect the public good and the University, and in order to
fulfill obligations to research sponsors, the University shall claim equity in
all discoveries and its right to acquire the title to and control of such
discoveries where the discoveries are made by faculty, staff, employees, or
students (including all types of trainees or postgraduate fellows) working on or
arising from programs supported in whole or in part by funds, space, personnel,
or facilities provided by the University.
B. When a discovery is made by an inventor outside of any program
conducted by the University, and the inventor can demonstrate that the
University did not provide or administer significant funds, space, personnel, or
facilities for work leading to the discovery, the discovery shall remain the
exclusive property of the inventor or his/her sponsor. The University shall not
ordinarily consider provision of office, classroom, or library facilities as
constituting significant use of University funds, space, personnel or
facilities. For purposes of this Policy, the term "Investor" shall include all
individuals who participated in and signed a disclosure statement respecting a
discovery or invention.
C. When necessary, the University Committee on Inventions and Discoveries
("Committee") shall decide whether an invention or discovery should be
classified under Paragraph A or Paragraph 3 of this Paragraph 1. Persons or
entities claiming a right to receive royalty interests under the provisions of
Paragraph 4 may appeal the decision of the Committee to the President of the
University. The President shall recommend final action to the Trustees, whose
decision shall be final.
2. ROYALTIES
Where the University is entitled to equity in a discovery, the Inventor shall
receive 30 percent of the net royalties accruing therefrom unless the University
recommends a lesser share, which shall not be less than 15 percent based upon
relevant circumstances relating to the discovery. In the
<PAGE>
event that the University determines that such lesser share is appropriate, the
University shall in its sole discretion designate the recipient or recipients of
the percentage share by which the Investor's share has been reduced. The
Community Technology Foundation (CTF) of Boston University, exclusive agent for
the administration of patents or discoveries made within the University, shall
receive 45 percent of the net royalties (see Paragraph 4). The remaining
royalties from, and equities in the Invention shall be distributed to the School
of the Investor, or in the absence of a School's being involved, the primary
unit or entity of the University with which the Investor works or is affiliated.
Net royalties are defined as gross royalties less amounts granted by the
University specifically for the invention or discovery process, and the cost of
securing, protecting, preserving, and maintaining patents, and of licensing and
marketing of the patent rights, or other costs or fees directly attributable to
the inventions being licensed.
3. DISCLOSURES
Because the securing of rights in discoveries and inventions depends on prompt
and efficient patent application and administration, all faculty, staff,
students, and employees of the University who make inventions or discoveries
shall immediately disclose said inventions or discoveries to the CTF Patent
Administrator and to the Investor's supervisor. This disclosure obligation
shall apply to all inventions and discoveries, without regard to whether they
fail under Paragraph A or 3 above.
4. PATENT ADMINISTRATION
CTF shall be the exclusive agent of the University for the administration of
inventions and discoveries made within the University and covered under
Paragraph 1.A. CTF shall present the disclosures to the Committee. Such report
shall state whether CTF has determined that an invention or discovery will be
developed by the University. The Committee shall consist of eleven voting
members, at least a majority of whom shall be faculty members from the Schools
and Colleges of the University. The members of the Committee and the Chairman
of the Committee shall be designated by the President of the University. CTF
shall render a written semiannual report to the Chairman of the Committee on the
disposition and status of all inventions and discoveries submitted. CTF shall
as promptly as practicable determine whether an invention or discovery shall be
pursued by the University. If the Committee determines that CTF has not filed a
patent application within one year after it has received a disclosure in respect
of which the University is entitled to claim an interest, the Committee, in
consultation with the Inventor, shall determine what other disposition, if any,
shall be made of the invention or discovery and of its development.
5. COVERAGE
The Policy shall cover only discoveries and inventions that are patentable as
the term is defined in the United States Code, as amended, or the laws of other
countries where applications are filed.
6. TRUSTEE REVIEW
<PAGE>
Any disputes that arise under this Policy that are not resolved by the Committee
shall be referred to the President of the University, who shall recommend final
action to the Trustees. The decision of the Trustees shall be final with
respect to all disputes.
7. EMPLOYMENT AGREEMENTS
Rights and obligations under this Policy shall survive any termination of
enrollment or employment at the University.
Nothing herein contained is intended to grant or dispose of any right,
title, and interest to any disclosure, idea, improvement, or invention, whether
patentable or not, which has been supported or funded by outside parties who
acquire rights to such disclosure, ideas, improvements, and invention.
7. CONSULTING AGREEMENTS
The rights of the University under this policy, and the interests of sponsors
under research grants or contracts, may not be abrogated or limited by
consulting agreements or other contracts entered into between University
students or employees and outside organizations or employers. University
students and employees should inform outside employers of their obligations and
commitments to the University under this policy. Such students and employees
should ascertain that patent clauses in their agreements are not in conflict
with their obligations to the University or this Policy statement. Each student
and employee should make his/her obligations to the University clear to those
with whom such agreements may be made, and should ensure that they are provided
with a current statement of University policy. Upon request, the University
will provide a standard clause which may be inserted in a student's or
employee's consulting agreement. This clause will put third parties on notice
as to the University's rights under this policy with respect to inventions and
discoveries. In cases of conflict of interest, the University reserves the
ultimate right to determine the final disposition of the rights and interests
involved.
Adopted, as amended, by the Trustees of Boston University, November 12, 1991.
PATENT AGREEMENT
I affirm that I have received and have read the Boston University Patent Policy
Charles River Campus.
For and in consideration of the provision by Boston University or support in the
form of funds, space, personnel, facilities instruction, supervision or other
assistance, I hereby accept the aforesaid Patent Policy as determinative of my
rights are (_________) in relation to any discoveries or patentable inventions.
________________________________________________________________________________
Signature Date
________________________________________________________________________________
Name
<PAGE>
Proposed Budget 2/16/95
Sponsor: SEQUENOM EXHIBIT F
---------
Principal Investigator: Dr. Charles Cantor
Project Duration 9/15/94 - 9/14/95
***
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*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the Commission.
<PAGE>
SEQUENOM, INC.
11555 Sorrento Valley Road
Suite C
San Diego, California 92121
February 5, 1997
Boston University
Attention: Maureen Rodgers
Office of Sponsored Programs
881 Commonwealth Avenue
Boston, Massachusetts 02215
Re: Sponsored Research Agreement dated September 15, 1994 between the Trustees
of Boston University and Sequenom, Inc. (the "Agreement")
Ladies/Gentlemen:
The purpose of this letter is to set forth our understanding with respect to the
termination of the Agreement and the final payment due to Boston University with
respect to the Agreement. We have agreed as follows:
1. The Agreement shall be deemed to have been extended from September 15, 1995
through September 30, 1997 under Article II thereof, and shall expire on
September 30, 1997.
2. In full satisfaction of all monetary obligations of Sequenom, Inc. to
Boston University with respect to the Agreement as so extended, whether due
or to become due, Sequenom shall make a final payment of *** to
Boston University promptly following execution hereof by all parties
hereto. This will bring the total amount paid by Sequenom to Boston
University under the Agreement to ***.
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the Commission.
<PAGE>
Boston University
February 5, 1997
Page Two
If the foregoing correctly sets forth our understanding, please execute one copy
of this letter agreement in the space indicated below and return it to me at
your earliest convenience.
Very truly yours,
/s/ John J. DiBello
John J. DiBello, CFO
Accepted and agreed this
11th day of February, 1997
TRUSTEES OF BOSTON UNIVERSITY CHARLES R. CANTOR
By: /s/ John F. Imbergano /s/ Charles R. Cantor
--------------------------------------- ----------------------------------
John F. Imbergano
Asst. V.P. for Financial Affairs
& Comptroller
<PAGE>
Sequenom, Inc. SEQUENOM LOGO Sequenom GmbH
11555 Sorrento Valley Road Mendelssohnstrasse 15 D
San Diego, CA 92121-1331 USA D-22761 Hamburg Germany
Tel. + 1-619-350-0345 Tel. + 49-40-899676-0
Fax. + 1-619-350-0344 Fax. + 49-40-899676-0
www.sequenom.com www.sequenom.com
September 6, 1998
Re: BU Sponsored Research Agreement
Dear Dr. Cantor:
Your request for a *** extension to the Sponsored Research Agreement is
granted. Specifically, the end date is extended to 9/30/99 for completion of
the work plan as outlined in the current Sponsored Research Agreement between
Boston University and Sequenom Inc. (PI: Charles R. Cantor). Sequenom, Inc.
will immediately pay the remaining funding of *** under this existing
agreement.
Sincerely,
/s/ Steve Zaniboni
Steve Zaniboni
Sr. Vice President
Finance and Administration
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the Commission.
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