Sponsored Research Agreement - Boston University and Sequenom Inc.
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
UNIVERSITY.
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.
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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.
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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,
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
agreements
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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
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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
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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
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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,
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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
party.
8.3 (a) UNIVERSITY hereby grants SPONSOR a first option to acquire a royalty
bearing, exclusive, worldwide license, including the right to
sublicense, to
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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
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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.
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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
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 the third
business day after mailing by first class mail, postage prepaid, to the
following addresses or facsimile numbers (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):
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.
11555 Sorrento Valley Road
San Diego, CA 92121
Tel: (858) 350-0345
Fax: (858) 350-0344
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:
------------------------------------
Printed Name:
---------------------------
Title:
----------------------------------
SEQUENOM, INC.
By:
------------------------------------
Printed Name:
---------------------------
Title:
----------------------------------
I have read this Agreement and agree to comply with its terms.
By:
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Printed Name: Dr. Charles R. Cantor
Title: Principal Investigator
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EXHIBIT A
RESEARCH PROGRAM SCOPE OF WORK
The Charles R. Cantor research group at the Center for Advanced Biotechnology
(CAB) at Boston University ("UNIVERSITY") will investigate optimizations of mass
spectrometry (MS) based analysis of nucleic acids. The work will focus
primarily on development of methods for detection of mutations and/or single
nucleotide polymorphisms (SNPs) and de novo DNA sequencing; additional
investigations will be made to determine the feasibility of MS-based
quantitative measurement of genetic expression.
The work will be comprised of both laboratory and computational investigations,
with a special emphasis on techniques and assays that can be adapted for use in
the large-scale automated processes utilized by Sequenom ("SPONSOR").
The following activities will be accomplished under this work plan:
1) Provide SPONSOR with potential assays for large-scale MS-based
SNP/polymorphism detection. These assays will be simulated and compared with
experimentally derived data generated in proof of principle experiments at
CAB.
2) Provide SPONSOR with potential assays for MS-based diagnostic detection of
SNPs, polymorphisms, and de novo DNA sequencing. The assays will be
simulated and compared with experimentally derived data generated in proof
of principle experiments at CAB.
3) Provide SPONSOR with novel methods for capture of nucleic acid samples prior
to analysis by MS. Potential methods to be investigated include positional
sequencing by hybridization (PSBH) arrays, and ligation mediated SNP
detection arrays.
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EXHIBIT B
BOSTON UNIVERSITY
PRINCIPLE INVESTIGATOR: Charles R. Cantor, Ph.D.
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Sequenom Projections 1999-2000
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BUDGET DETAIL
Name Role Type % Effort Institutional Salary Fringe Total
Appt. Base Salary Requested Benefits
-----------------------------------------------------------------------------------------------------------
Graber, J Research 12 86% 40,900 34,900 7,294 42,194
Assoc
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Siddiqi, F Research 12 32% 20,625 6,525 6,525
Assist
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Sabanayagam, C Research 12 8% 5,937 1,484 1,484
Assist
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Zhang, L Research 12 100% 18,750 18,750 18,750
Assist
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Undergraduates 5,000
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SUBTOTALS 66,659 7,294 73,953
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Equipment 0
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Travel 3,000
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Supplies 21,000
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Other
Expenses 3,500
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----------------- -------------------
Total Direct 101,453
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Indirect 63,915
53%
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165,368
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EXHIBIT C
CONFIDENTIAL DISCLOSURE AGREEMENT
This Agreement, dated as of , is between and Sequenom, Inc.
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In connection with the conduct of a research program pursuant to a
Sponsored Research Agreement effective as of October 1, 1999 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.
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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:
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 or contractual 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.
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 D
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
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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
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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
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EXHIBIT E
PLEASE SEE EXHIBIT 10.25
PREVIOUSLY FILED