MATERIALS TRANSFER AGREEMENT
The Trustees of the University of Pennsylvania agree to provide certain research substances and know-how (hereinafter "Materials", as further described below), for research purposes only, under the following conditions:
1. THIS AGREEMENT, effective as of the date of the last signature (the “Effective Date”), is made by and between The Trustees of the University of Pennsylvania (hereinafter "Penn"), on behalf of PENN PI, (hereinafter "Investigator") and CORPORATION (hereinafter "Recipient") on behalf of RECIPIENT SCIENTIST (if applicable).
2. Materials covered by this Agreement include: (a) those described in EXHIBIT A provided by Investigator at Investigator's sole discretion; (b) any related biological material and associated know-how and data provided by Investigator; and (c) any substance that is replicated or derived there from. The Materials are considered proprietary to Penn. Penn shall be free, in its sole discretion, to distribute the Materials to others and to use the Materials for its own purposes.
3. The Materials may only be utilized for research at Recipient's facility. Recipient shall not distribute or release the Materials to any person other than laboratory personnel under Recipient's direct supervision. Recipient shall ensure that no one will be allowed to take or send these Materials to any location other than Recipient's facility.
4. This Agreement and the transfer of Materials are for Recipient's use of the Materials solely for research described in Exhibit A. Recipient agrees that nothing herein shall be deemed to grant any right under any Penn patents. The Materials will not be used in research that is subject to consulting or licensing obligations to any third party, other than obligations to the U.S. government resulting from research that is funded by the U.S. government.
5. Recipient agrees to use the Materials in compliance with all laws and regulations, including but not limited to current EPA, FDA, USDA, and NIH guidelines. The Materials are supplied solely for research purposes, for use in animals and/or in vitro. THE MATERIALS WILL NOT BE USED IN HUMANS.
6. (a) Recipient shall have no rights in the Materials other than as provided in this Agreement, and at the request of Penn, Recipient will return all unused Materials. It is understood that any and all proprietary rights, including but not limited to patent rights, trademarks, and proprietary rights, in and to the Materials and replications or derivatives of the Materials shall be and remain in Penn, subject to the rights granted herein.
(b) Any inventions created solely by Recipient hereunder shall be owned by Recipient. If Recipient wishes to commercialize a product which contains the Materials, Recipient agrees to contact Penn through its Center for Technology Transfer to determine what ownership interests, if any, Penn may have in such commercial product. Inventorship for such commercial product shall be determined according to US Patent Law. If the use of the Material leads to an invention or discovery (whether or not patentable) relating to the Materials (an "Invention"; in the case of biological Material, Invention includes any progeny or derivatives of, or any modifications to the Materials), Recipient shall promptly inform Penn of such Invention and will grant Penn a royalty-free, non-exclusive, sublicenseable license to practice the Invention for any purposes under any right Recipient might acquire. Additionally, Penn shall have an exclusive option to negotiate for an exclusive commercial license to any such Invention. Penn may exercise this option upon written notice to Recipient within ninety (90) days from the date upon which Penn receives notices of the invention. In the event that Penn elects to exercise the license option, the parties shall attempt to negotiate in good faith a license agreement containing commercially reasonable terms.
7. Recipient agrees to maintain for 5 years following the receipt of Materials the confidentiality of any proprietary information respecting the Materials that is marked "confidential" or the like, or that is reasonably understood to be of a confidential nature. Recipient agrees to provide Penn with a copy of any manuscript or abstract disclosing the research with the Materials, prior to submission thereof to a publisher or to any third party, and in any case, not less than forty-five (45) days prior to any public disclosure, for the purpose of protecting proprietary or intellectual property of Penn that might be contained in such information. However, these obligations will not apply to any information that is (a) publicly available or becomes so (other than through the fault of the receiving party), (b) available from a third party without violation of an obligation of nondisclosure to the disclosing party, (c) already known to or is independently developed by the receiving party, in each case to the extent evidenced by written records promptly disclosed to Penn, or (d) disclosed pursuant to prior written consent of the disclosing party or order of a court or governmental authority. In the event of any publication or presentation of Recipient's work using the Materials or information supplied by Penn, Recipient agrees to acknowledge Penn and/or give credit to Penn scientists, as scientifically appropriate, based on any contribution they may have made to the work. Nothing in this Agreement will prevent Recipient from experimenting with, using or commercializing its own or any third party's biological materials.
8. Recipient acknowledges that the Materials are experimental in nature and they are provided WITHOUT WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER WARRANTY, EXPRESS OR IMPLIED. PENN MAKES NO REPRESENTATION OR WARRANTY THAT THE USE OF THE MATERIALS WILL NOT INFRINGE ANY PATENT OR OTHER PROPRIETARY RIGHTS.
9. In no event shall Penn be liable for any use by Recipient of the Materials. Recipient agrees to defend, indemnify, and hold harmless Penn, its Trustees, officers, employees, faculty, students, and agents from any loss, claim, injury, damage, expense or liability (including attorney's fees), of whatsoever kind or nature, which may arise from or in connection with this Agreement, including but not limited to Recipient's use, handling or storage of the Materials.
10. Recipient shall not use the name of Penn, Investigator, or any of Penn's faculty, staff or students, or a variant of any of the foregoing, for any purpose without the prior written approval of Penn.
11. Recipient shall report to Penn at least annually on Recipient's work utilizing the Materials.
12. Penn shall have the right to terminate this Agreement at any time if: (a) Recipient breaches any of the terms, covenants or conditions of this Agreement; or (b) Recipient becomes insolvent or voluntary or involuntary proceedings by or against Recipient are instituted in bankruptcy or under any insolvency law. Upon termination, Recipient shall immediately return to Penn all unused portions of the Materials.
13. This Agreement is not assignable, whether by operation of law or otherwise, without the prior written consent of Penn. This Agreement is the final, exclusive and entire agreement between the parties relating to its subject matter, and may be changed only by the parties' signed agreement. If any provision is determined to be invalid, illegal or unenforceable, that provision will be deemed amended or stricken (as appropriate) so as to be valid, legal and enforceable. This Agreement will be governed by the laws of the Commonwealth of Pennsylvania , without giving effect to conflict of law provisions.
THE TRUSTEES OF THE CORPORATION
UNIVERSITY OF PENNSYLVANIA
(Typed Name of Authorized Representative)
Read & acknowledged by: Read & acknowledged by:
PENN PI Recipient Scientist (if applicable)
RECIPIENT SCIENTIST’S NAME, ADDRESS, PHONE AND FAX NUMBER:
SUMMARY OF RESEARCH:
Page of 4 PENN PI/CORP/DATE
MTA CORPORATE VERSION 4-15-08