Research Agreement re: Muscular Dystrophy - ViaCell Inc. and General Hospital Corp.
RESEARCH AGREEMENT
This Agreement is made as of the January 1, 2002 ("Effective Date"),
between ViaCell, Inc., a Delaware corporation having an address at One
Innovation Drive, Worcester MA 01605 ("VIACELL"), and The General Hospital
Corporation, a not-for-profit Massachusetts corporation doing business as
Massachusetts General Hospital, Fruit Street, Boston, Massachusetts 02114
("GENERAL").
VIACELL desires GENERAL to perform research and evaluation herein
described upon the terms provided.
NOW THEREFORE, the parties hereto agree as follows:
1. The research project directed at ADMINISTRATION OF HUMAN UMBILICAL
CORD BLOOD CELLS IN MUSCULAR DYSTROPHY described in Appendix A and funded by
VIACELL ("Project") shall be performed by Dr. Robert Brown ("Principal
Investigator") and other GENERAL personnel working under the direction of
Principal Investigator (collectively with Principal Investigator,
"Investigators"). At the conclusion of the Project, a report disclosing the
results of the research shall be provided to VIACELL, which shall have the right
to use such results to the extent such use does not infringe any GENERAL patent
not expressly licensed to VIACELL herein.
2. This Agreement shall remain in effect for a term of one (1) year
from the Effective Date.
3. VIACELL agrees to provide GENERAL with a grant [*] which includes
the full direct costs of the Project and the full indirect costs attendant
thereto, as shown in the Budget attached hereto as Appendix B. The foregoing
grant shall be paid on the following schedule:
[*]
Payment shall be made to "The General Hospital Corporation" and shall be sent
to:
Financial Director, Grants and Contracts
Research Finance
Massachusetts General Hospital
Fifty Staniford Street, 10th floor
Boston, MA 02114
4. In the event that either party discloses to the other party any
information that relates to the Project which the disclosing party considers
confidential, the rights and obligations
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* Confidential treatment has been requested with respect to certain portions of
this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and Exchange
Commission.
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of the parties with respect to such information shall be governed by the terms
and conditions set forth in Appendix C.
5. ViaCell Proprietary Materials; Disclaimers.
Supply of ViaCell Proprietary Materials. For the purposes of this Agreement,
the term "ViaCell Proprietary Materials" shall mean any and all (i) materials
provided by VIACELL to GENERAL and Investigator hereunder, and (ii) materials
that incorporate or are combined with any materials provided by VIACELL to
GENERAL and Investigator hereunder. Promptly after the Effective Date, VIACELL
will provide to Investigator a reasonable quantity of the ViaCell Proprietary
Materials.
Ownership. VIACELL has developed the ViaCell Proprietary Materials over a
substantial period of time at substantial expense, and the ViaCell Proprietary
Materials are of great importance to VIACELL's business. Institution and
Investigator acknowledge that VIACELL is and will at all times remain the owner
of the ViaCell Proprietary Materials.
Limitations on Use and Transfer. Unless VIACELL has given prior written consent,
which shall not be unreasonably withheld, Institution and Investigator shall not
(a) use any ViaCell Proprietary Materials for any purposes other than performing
the Evaluation Plan during the Term, (b) use any ViaCell Proprietary Materials
in commercial research, which shall include but not be limited to research
sponsored by a third party commercial entity, (c) transfer or provide access to
the ViaCell Proprietary Materials to any third party, and/or (d) copy, reverse
engineer or attempt to derive the sequence or composition or underlying
information, structure or ideas of the ViaCell Proprietary Materials.
No Representations or Warranties: Compliance With Laws. Any ViaCell Proprietary
Materials delivered pursuant to this Agreement are understood to be experimental
in nature and may have hazardous properties. VIACELL MAKES NO REPRESENTATION OR
WARRANTY OF ANY KIND WITH RESPECT TO THE VIACELL PROPRIETARY MATERIALS OR
INFORMATION SUPPLIED BY IT TO INSTITUTION AND INVESTIGATOR HEREUNDER, AND
EXPRESSLY DISCLAIMS ALL WARRANTIES, EXPRESS OR IMPLIED, INCLUDING BUT NOT
LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, OR
NON-INFRINGEMENT OF THIRD PARTY PATENTS, WITH RESPECT TO THE FOREGOING.
Institution will be solely responsible and liable, and shall indemnify and hold
harmless VIACELL, its directors, officers and employees, for any and all costs,
expenses (including attorneys' fees), damages and other liabilities arising from
activities undertaken by Institution and Investigator under this Agreement,
except to the extent (if any) resulting from the gross negligence or willful
misconduct of VIACELL. VIACELL will be solely responsible and liable, and shall
indemnify and hold harmless Institution, its directors, officers and employees,
for any and all costs, expenses (including attorneys' fees), damages and other
liabilities arising out of
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* Confidential treatment has been requested with respect to certain portions of
this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and Exchange
Commission.
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VIACELL's use of any Data generated under this Agreement, except to the extent
(if any) resulting from the gross negligence or willful misconduct of
Institution. Institution and Investigator will use all ViaCell Proprietary
Materials provided to it by VIACELL hereunder in compliance with all applicable
laws and regulations, including but not limited to those relating to animal
testing, biotechnological research or the handling and containment of
biohazardous materials. Institution and Investigator shall not use the ViaCell
Proprietary Materials in any in vivo experiments on human subjects.
No Implied License. Except for the right to use the ViaCell Proprietary
Materials to perform the Evaluation Plan, no license, express or implied, is
granted by VIACELL under any intellectual property rights owned or controlled or
developed hereunder by VIACELL.
6. Investigators shall have the right to present or publish the results
of the Project and Principal Investigator shall provide an early draft of any
presentation or manuscript or abstract disclosing such results for review by
VIACELL prior to first public presentation or submission for publication, at
least thirty (30) days in advance in the case of a presentation or manuscript,
and at least seven (7) days in advance in the case of an abstract. At the
request of VIACELL, Investigators shall delete any of VIACELL's Confidential
Information provided under Appendix C from such presentation, manuscript or
abstract. If, during its review period, VIACELL notifies GENERAL and
Investigators that the proposed disclosure reveals a potentially patentable
invention, Investigators agree to defer submission for publication, or, if
practicable, presentation, for up to thirty (30) additional days, or until a
patent application is filed, whichever occurs first. At the end of such seven,
thirty or maximum sixty day period, as the case may be, Investigators shall be
free to make such presentation or to submit such manuscript or abstract for
publication at their discretion.
7. Principal Investigator and any other Investigator who shall conceive
and reduce to practice an invention, solely or jointly, in the performance of
the Project (hereinafter referred to as "Invention") shall promptly report such
Invention to GENERAL and shall assign all of his or her rights, title and
interest in the Invention to GENERAL. GENERAL shall promptly advise VIACELL in
writing of each Invention disclosed to GENERAL and shall discuss with VIACELL
whether a patent application or applications (together with any patents issued
thereon, "Patent Rights") pertaining to such Invention should be filed and in
which countries. In the event of joint inventorship between VIACELL personnel
and GENERAL Investigators, VIACELL personnel shall assign all of their rights,
title and interest in the Invention ("Joint Invention") to VIACELL, and GENERAL
Investigators shall assign all of their rights, title and interest in the Joint
Invention to GENERAL, and the Joint Invention will be deemed to be jointly
owned. If both parties mutually agree that Patent Rights should be filed,
applications assigned solely to GENERAL shall be filed by GENERAL, and
applications owned jointly by GENERAL and VIACELL shall be filed as mutually
agreed upon by the parties. In the event VIACELL is not interested in having
Patent Rights filed with respect to a particular Invention, VIACELL shall advise
GENERAL of such fact within ninety (90) days from the date on which the
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* Confidential treatment has been requested with respect to certain portions of
this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and Exchange
Commission.
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Invention was disclosed to VIACELL by GENERAL and GENERAL shall be free to file
and prosecute Patent Rights on such Invention (including GENERAL's rights in any
Joint Invention) at its own expense and to license such Patent Rights to any
other party.
All information given to VIACELL by GENERAL in accordance with this
Paragraph 7 will be held in confidence by VIACELL so long as such information
remains unpublished or publicly undisclosed by GENERAL.
All patent costs pertaining to any Patent Rights filed by mutual
agreement of VIACELL and GENERAL, including preparation, filing, prosecution,
issuance and maintenance costs, shall be borne by VIACELL.
As to any Patent Rights assigned in whole or in part to GENERAL and
filed by mutual agreement of the parties, VIACELL shall have (i) a royalty-free,
fully paid-up, non-exclusive, worldwide license under any intellectual property
rights for VIACELL's internal research use, and (ii) for the for the twelve (12)
months next following the filing of such Patent Rights in the United States
Patent and Trademark Office the option to obtain a world-wide, royalty bearing,
exclusive license under the rights assigned by Investigators to GENERAL therein
with the right to sublicense. It is understood that GENERAL will reserve the
right to use any Invention for research, clinical and educational purposes, and
that if federal funding supports the Invention, VIACELL's license will be
subject to the rights, conditions and limitations imposed by U.S. law including
without limitation the royalty-free non-exclusive license granted to the U.S.
government (see 35 USC sec. 202 et seq. and regulations pertaining thereto).
This option is to be exercised by written notice to GENERAL during said
twelve month period and the negotiation, during the six (6) months next
following such notice, of a license agreement containing license terms standard
for agreements between universities and industry including without limitation
clauses providing for payment of reasonable royalties and other compensation to
GENERAL, objective, time-limited due diligence provisions for the development,
commercialization and marketing of a product embodying the Invention and product
liability indemnification and insurance requirements which are acceptable to
GENERAL's liability insurance carrier. In the absence of such notice by VIACELL
and agreement on license terms, GENERAL may grant a license to such Patent
Rights to any other party.
8. GENERAL and VIACELL shall each be responsible and shall hold the
other and its directors, trustees, employees, and staff harmless for any injury
to persons or damage to property, to the extent that such injury or damage is
caused by the negligence or the reckless or intentional misconduct of their
directors, trustees, employees or staff in carrying out the Project; provided,
however, that VIACELL will hold harmless GENERAL and its directors, trustees,
employees, and staff against any and all actions, suits, claims, demands or
prosecutions that may be brought or instituted against GENERAL and/or its
directors, trustees, employees and staff
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* Confidential treatment has been requested with respect to certain portions of
this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and Exchange
Commission.
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based on or arising out of the manufacture, use, sale or other distribution of
any product by VIACELL, its affiliates or licensees, or the use of the results
of the research or any material transferred by GENERAL to VIACELL, its
affiliates or licensees, excepting any such action, suit, claim, demand or
prosecution which is based solely on the negligence or reckless or intentional
misconduct of GENERAL and/or its directors, trustees, employees or staff in the
use of such product. Any party entitled to indemnification hereunder shall give
the indemnifying party prompt notice of any covered claim, shall provide the
indemnifying party with the opportunity to defend against the claim, and shall
reasonably cooperate in such defense.
9. Each party agrees that, except as required by applicable laws or
regulations, it shall not use the name or logo of the other party or of any
employee or staff member of the other party in any advertising, promotional
material, press release or other publicity without the prior written consent of
such party, which consent shall not be unreasonably withheld or delayed.
10. Any request, notice, report, approval or other communication
required or permitted under this Agreement will be in writing (except in the
case of verbal communications and teleconferences updating either party as to
the status of work hereunder), should be addressed as set forth below or such
other address as either party may designate:
To VIACELL: ViaCell Inc.
One Innovation Drive
Worcester, MA 01605
Attn: Seth Finklestein, M.D.
cc: Sharon Pick, Director of Business Development
To GENERAL: Massachusetts General Hospital
Thirteenth Street, Building 149
Charlestown, MA 02129
Attn: Director, Corporate Sponsored Research & Licensing
To Investigator: Robert H. Brown, Jr., D. Phil, M.D.
Massachusetts General Hospital
Day Lab, MGH-East, Room 3125
Building 114, Navy Yard
Charlestown, MA 02129
11. If either party shall fail to faithfully perform any of its
obligations under this Agreement, the non-defaulting party may give written
notice of the default to the defaulting party. Unless such default is corrected
within thirty (30) days after such notice, the notifying party may terminate
this Agreement upon written notice. Expiration or termination of this
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* Confidential treatment has been requested with respect to certain portions of
this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and Exchange
Commission.
<PAGE>
Agreement for any reason shall be without prejudice to any rights that shall
have accrued to the benefit of either party prior to such expiration or
termination, and shall not relieve either party of any obligations that have
accrued to either party prior to such expiration or termination or that survive
such expiration or termination (including, without limitation, under Articles 4,
5, 6, 7, 8 and 9 of this Agreement). In addition, following expiration or
termination of this Agreement, at VIACELL's request, GENERAL shall return to
VIACELL or destroy, as instructed by VIACELL, the ViaCell Proprietary Materials
and ViaCell Confidential Information.
12. Neither party shall assign this Agreement or any rights hereunder
without the prior written consent of the other party, except in the case of a
merger, reorganization, sale of substantially all assets or other "change in
control" transaction. Subject to the foregoing, this Agreement shall be binding
upon and inure to the benefit of the Parties hereto and their respective
successors and assigns.
13. This Agreement shall be governed by the laws of the Commonwealth of
Massachusetts, regardless of the choice of law rules of any jurisdiction.
IN WITNESS WHEREOF, GENERAL and VIACELL have caused this instrument to be
executed.
VIACELL, INC. THE GENERAL HOSPITAL CORPORATION
BY: /s/ Seth Finklestein BY: /s/ Marie Lossky
---------------------- ----------------------------------
NAME Seth Finklestein NAME: Marie Lossky
---------------------- ------------------------------
TITLE: VP, Neuroscience TITLE: Industry Agreement Manager
--------------------- ------------------------------
DATE: 1/2/01 DATE: 12/18/01
---------------------- -------------------------------
I have read Paragraphs 5, 6 and 7 of the foregoing Agreement and agree to comply
with the obligations of the Principal Investigator/Investigators stated therein.
In addition, I have read Appendix C and agree to comply with the obligations of
GENERAL stated therein.
/s/ Robert Brown
---------------------------
NAME: Dr. Robert Brown
DATE: 12/20/2001
----------------------
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* Confidential treatment has been requested with respect to certain portions of
this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and Exchange
Commission.
<PAGE>
APPENDIX A
PROPOSAL FOR ADMINISTRATION OF HUMAN UMBILICAL CORD BLOOD CELLS
IN MUSCULAR DYSTROPHY
submitted by:
Robert H. Brown, Jr., M.D.
Day Lab, MGH-East, Room 3125
Building 114, Navy Yard
Charlestown, MA 02129
Ph: 617-726-5750
Fx: 617-726-8543
Em: brown@helix.mgh.harvard.edu
to:
Seth Finklestein, M.D.
Viacell, Inc.
DRAFT 10-04-01
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* Confidential treatment has been requested with respect to certain portions of
this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and Exchange
Commission.
<PAGE>
[*]
9 pages omitted pursuant to a request for confidential treatment
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* Confidential treatment has been requested with respect to certain portions of
this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and Exchange
Commission.
<PAGE>
APPENDIX B
[*]
3 pages omitted pursuant to a request for confidential treatment
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* Confidential treatment has been requested with respect to certain portions of
this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and
Exchange Commission.
<PAGE>
APPENDIX C
CONFIDENTIAL INFORMATION
It is anticipated that in the performance of the Project, the parties
will be provided with or given access to certain information of the other party
which that party considers proprietary. The rights and obligations of the
parties with respect to such information are as follows:
1. CONFIDENTIAL INFORMATION. For purposes of this Agreement, the term
"Confidential Information" shall mean any confidential or proprietary
scientific, technical, trade or business information given by one party (the
"Disclosing Party") to the other party (the "Receiving Party") in connection
with this Agreement. The Receiving Party shall use the Confidential Information
of the Disclosing Party only in accordance with the activities contemplated by
this Agreement and shall use its reasonable efforts to not disclose to any third
party any Confidential Information of the Disclosing Party, without the prior
written consent of the Disclosing Party. The foregoing obligation shall survive
the expiration or termination of this Agreement for a period of five (5) years.
This obligation shall not apply to Confidential Information that:
(a) is known by the Receiving Party at the time of its receipt, and not
through a prior disclosure by the Disclosing Party to the Receiving Party, as
documented by business records;
(b) at the time of disclosure or thereafter becomes published or
otherwise part of the public domain without breach of this Agreement by the
Receiving Party;
(c) is subsequently disclosed to the Receiving Party by a third party
who has the right to make such disclosure;
(d) is developed by the Receiving Party independently of proprietary
information or other information received from the Disclosing Party and such
independent development can be properly demonstrated by the Receiving Party; or
(e) is required to be disclosed by law or court order, provided that
notice is promptly delivered to the Disclosing Party in order to provide an
opportunity to seek a protective order or other similar order with respect to
such proprietary information and thereafter the Receiving Party discloses only
the minimum information required to be disclosed in order to comply with the
request, whether or not a protective order or other similar order is obtained by
the Disclosing Party.
3
* Confidential treatment has been requested with respect to certain portions of
this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and Exchange
Commission.