COLLABORATION AGREEMENT
This Collaboration Agreement (the “Agreement”), effective as of
, 2015 (“Effective
Date”), is entered into by and between Salk Institute for Biological Studies, San Diego, California, a
California nonprofit public benefit corporation (“SALK”), and COMPANY, ADDRESS (hereinafter
referred to as “COMPANY”). Each of SALK and COMPANY are referred to herein as a “Party” or
collectively as the “Parties”.
WHEREAS COMPANY wishes to collaborate with Salk on a research project to be performed
by and under the direction of Dr. NAME (“Principal Investigator”) at SALK; and
WHEREAS, Principal Investigator wishes to perform such research project, in accordance with
the terms and conditions set forth in this Agreement;
NOW THEREFORE, in consideration of the promises and mutual covenants set forth herein and
intending to be legally bound, SALK and COMPANY agree as follows:
1. DEFINITIONS
A.
“Affiliate” shall mean any entity that controls, is controlled by or is under common
control with Licensee, where "control" means beneficial ownership of more than fifty percent (50%) of
the outstanding shares or securities or the ability otherwise to elect a majority of the board of directors or
other managing authority.
B.
“Background IP” shall mean inventions, discoveries, data, chemical entities and
Materials developed or controlled by either Party prior to the Effective Date or during the Term, but not
as a result of performance of the Research Plan, whether or not patentable, and that are, or could
reasonably be expected to be, relevant to practice any Invention.
C.
“Invention” shall mean any invention or discovery, whether or not patentable, that is
conceived by one or more employees, contractors or agents of SALK and / or one or more employees,
Affiliates, contractors or agents of COMPANY in the performance of the Research Plan.
D.
“Sole Invention” shall mean an Invention made by one or more inventors all of whom are
required to assign rights in the Invention to a single Party.
E.
“Joint Invention” shall mean an Invention made by more than one inventor in which at
least one inventor is required to assign rights in the Invention to COMPANY, and at least one inventor is
required to assign rights in the Invention to SALK.
F.
“Material” shall mean anything provided to one party by or on behalf of the other party
in connection with the Research Plan, such as, but not limited to, cells, tissues, mice, media, chemical
compounds (including without limitation any small molecule or biologic, and any intermediates,
fragments, fusions, complimentarily determining regions, metabolites, analogues, isomers, salts, esters or
formulations of any such small molecule or biologic), vectors and proteins (together with all fragments,
progeny, portion, unmodified derivatives, hybrids, antibodies or analogs thereof).
G.
“Research” shall mean the research conducted in accordance with the Research Plan.
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H.
“Research Plan” shall mean the research program that is described in Exhibit A
I.
“Research Results” shall mean results, information and data generated from the Parties’
work in the course of the performance of the Research Plan.
J.
“Confidential Information” shall mean any information, disclosed by or on behalf of
COMPANY to Salk, or by Salk to COMPANY, regardless of the form or manner of disclosure, provided
that such information is clearly identified as “confidential” at the time of disclosure, which information
may include without limitation memoranda, documents (including electronic files, records, drawings,
manuals and disks (including any copies, notes or memoranda made by the receiving party)), data, oral or
visual presentations, inventions, procedures, discoveries, patent applications, improvements, knowledge,
specifications, drawings, diagrams, business information or ideas described therein which are not
generally known to those in the industry to which the information pertains or which would otherwise
qualify as a trade secret (as defined by the Uniform Trade Secrets Act) or other materials transmitted or
otherwise disclosed by Company (and its employees) to Salk, or by Salk (and its respective employees)
to Company. However, Confidential Information does not include any information that: (i) was in the
public domain at the time of disclosure, (ii) later became part of the public domain through no act or
omission of the recipient party, its employees agents, successors, or assigns, (iii) was lawfully disclosed
to the recipient by a third party having the right to disclose it, (iv) was already known by the recipient at
the time of disclosure and recipient can so demonstrate by competent written proof or (v) is required to
be disclosed to a governmental agency pursuant to such agency's rule and regulations in order to secure
regulatory approval, provided that Licensee shall first give notice to Salk of such disclosure and shall
have made a reasonable effort to maintain the confidentiality of such information.
2.
RESEARCH
A.
Scope of Research Plan. The scope of the work to be performed under this Agreement
shall be set forth in the Research Plan attached hereto as Exhibit A or any subsequent revisions of
Exhibit A mutually agreed upon in writing by duly authorized representatives of SALK and COMPANY.
The Parties shall conduct the Research, using their own facilities and equipment, in a good scientific
manner and in compliance with state-of-the-art scientific standards and laboratory practice and applicable
legal requirements, but within the scope of the budget, research plan and personnel commitments per the
attached Exhibits. In the event of any conflict between this Agreement and the Research Plan, this
Agreement will control.
C.
Limited Rights to Use Materials. It is expected that pursuant to this Agreement,
Materials shall be transferred between the Parties in the manner set forth in the Research Plan. The Party
providing the Material shall retain all right, title and interest to that Material, and no right, title or interest
to that Material shall vest in the receiving Party. The Party receiving the Material shall use the Material
solely for the purpose of performing the Research Plan per the attached Exhibit A. The receiving Party
will not chemically or biologically modify the Material, except as may be explicitly permitted in
furtherance of the Research Plan, unless otherwise agreed to in writing by the disclosing Party. The
receiving Party shall not transfer the Material, or any part of the Material, to any third party, other than
such Party’s employees who are responsible for the performance of the Research Plan. The receiving
Party will not administer the Material, or any materials produced from the Material, to humans. EACH
PARTY UNDERSTANDS THAT THE MATERIAL IS PROVIDED SOLELY FOR CERTAIN
RESEARCH USE ONLY AND HAS NOT BEEN APPROVED FOR HUMAN USE. USE OF THE
MATERIAL IN HUMANS IS SPECIFICALLY PROHIBITED. EACH PARTY ACKNOWLEDGES
THAT THE MATERIAL IS EXPERIMENTAL IN NATURE AND THAT IT IS PROVIDED "AS IS."
NEITHER PARTY MAKES ANY REPRESENTATIONS OR WARRANTIES WITH RESPECT TO
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THE MATERIAL OR THE USE OF THE MATERIAL. EACH PARTY DISCLAIMS ALL
WARRANTIES, EXPRESS OR IMPLIED, INCLUDING WIHTOUT LIMITATION ANY
WARRANTY OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND
NONINFRINGEMENT.
C.
Substitution of Principal Investigator. In the event that the Principal Investigator is
unable or unwilling to continue as Principal Investigator hereunder or terminates his or her employment
relationship with SALK, SALK shall promptly notify COMPANY. SALK shall use reasonable efforts to
identify a replacement Principal Investigator suitable to COMPANY. If SALK is unable to replace the
Principal Investigator to COMPANY’s reasonable satisfaction, COMPANY shall have the right to
terminate the Research in accordance with Section 14C hereof.
3.
MEETINGS AND REPORTS
A.
The Principal Investigator and researchers from SALK and COMPANY shall meet at a
time interval as agreed to by the Parties, in person or by teleconference, to review results arising from the
conduct of the Research Plan (“Research Results”). Within sixty (60) calendar days after the expiration
or termination of this Agreement, the Principal Investigator shall submit a comprehensive final report on
the Research to COMPANY.
B.
On reasonable prior notice, and subject to the availability during regular working hours
of the necessary SALK personnel, representatives of COMPANY may visit the facilities where the
Research Plan is being performed.
4.
PUBLICATION
A.
Review. Publication of research results is one of the primary missions of SALK.
COMPANY agrees that SALK shall be permitted to present at symposia, international, national and
regional meetings, and to publish the Research Results in journal articles, theses or dissertations (each, a
"Publication"); provided, however, that SALK agrees to submit to COMPANY for COMPANY's prior
review and comment any Publication utilizing the Research Results at least thirty (30) days prior to the
proposed date for submission of such Publication. COMPANY may delay any Publication for up to sixty
(60) days in order to file a patent application or take such other measures as COMPANY deems
necessary to establish and preserve its proprietary rights. For avoidance of doubt, any time periods set
forth in this paragraph may be extended at any time by mutual written agreement of the Parties.
5.
INTELLECTUAL PROPERTY
A.
Background Intellectual Property. All rights and title in and to any and all Background
IP shall reside with the owner thereof and, except as otherwise set forth herein, such ownership and
rights thereto shall not be affected by the Research Plan or either Party's performance of its obligations
hereunder. Each Party grants to the other Party a royalty-free, worldwide, non-exclusive license to Background
Intellectual Property solely during the Term, and to enable execution of the applicable Research Plan activities.
B.
Inventorship and Ownership. Inventorship of Inventions will be determined in
accordance with the principles of U.S. patent law. Salk Sole Inventions shall be owned by Salk.
COMPANY Sole Inventions shall be owned by COMPANY. Joint Inventions shall be owned jointly by
the Parties.
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C.
Research License.
SALK hereby grants to Company a worldwide, non-exclusive
license, without the right to sublicense, to SALK's interest in any Invention, solely for non-commercial
internal research purposes.
D.
Prosecution and Expenses
(i)
Joint Inventions. COMPANY shall be responsible for prosecuting Joint
Inventions. COMPANY and SALK shall jointly decide, on a case by case basis, whether or not to file
and where to file patent applications for Joint Inventions and shall jointly participate in decisions
regarding filing, prosecution and maintenance. Mutually acceptable counsel (in-house of either party or
law firm) shall be appointed that shall handle filing and prosecution of Joint Inventions. Both Parties
agree to cooperate and execute all documents that are necessary for the filing, prosecution and
maintenance of such patent applications. COMPANY will pay all costs for the filing, prosecution and
maintenance of any such patent applications for Joint Inventions. If COMPANY elects to not file a
patent on a Joint Invention, continue prosecution and/or maintenance, it will notify SALK in writing.
SALK may then elect to file a patent application, continue prosecution and/or maintenance at its own
expense on the Joint Invention, and COMPANY shall assign all right, title and interest in such Joint
Invention to SALK.
(ii)
SALK Sole Inventions. SALK shall be responsible for prosecuting SALK Sole
Inventions. SALK shall appoint patent counsel and control the prosecution. SALK will pay the costs for
the filing, prosecution and maintenance of such patent applications for SALK Sole Inventions that SALK
elects to file.
E.
CREATE Act. Notwithstanding anything to the contrary in this Section 6, each Party
shall have the right to invoke the Cooperative Research and Technology Enhancement Act of 2004, 35
U.S.C. 103(c)(2)-(c)(3) (the “CREATE Act”) when exercising its rights under this Section 6, without the
prior written consent of the other Party. Where a Party intends to invoke the CREATE Act, as permitted
by the preceding sentence, it shall notify the other Party and the other Party shall cooperate and
coordinate its activities with the invoking Party with respect to any submissions, filings or other activities
in support thereof. The Parties acknowledge and agree that this Agreement is a “joint research
agreement” as defined in the CREATE Act. The specification of any patent application filed pursuant to
this Agreement shall contain language required to invoke the CREATE Act as applicable.
6.
INDEMNIFICATION
A.
Indemnification by COMPANY. COMPANY hereby agrees to indemnify, defend, and
hold harmless SALK, its Affiliates, and their respective officers, directors, agents, successors, employees
and permitted assigns (collectively, the "SALK Indemnified Parties"), from and against any and all
losses, liability, damages, deficiency, costs, expenses or obligations, of any kind or nature (including
attorneys’ fees, expert witness fees, and court costs) with respect to any claims, suits, demands,
judgments or causes of action (collectively, “Claims”) directly or indirectly arising out of or relating to
this Agreement, including, but not limited to (a) a material breach of this Agreement by COMPANY; and
(b) the negligence or wrongful acts or omissions, willful misconduct, fraud or misrepresentation by
COMPANY; and (c) the actual or alleged infringement of a third party’s intellectual property rights, or
the injury or death of any person, based on any act or omission by COMPANY with regard to any
Invention, Material, or Background Technology; provided, however, COMPANY' indemnification
obligations hereunder shall not apply to the extent that such Claim is attributable to the negligence or
wrongful acts or omissions, willful misconduct, fraud or misrepresentation by any SALK Indemnified
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Party. For avoidance of doubt, the Parties agree that any exclusive license taken pursuant to this
Agreement by COMPANY for SALK Sole Inventions or for SALK’s interest in Joint Inventions shall
contain additional indemnification provisions related to COMPANY’ commercialization of any product
arising from a SALK Sole Inventions or from SALK’s interest in Joint Inventions.
B.
Notification of Claims. The SALK Indemnified Party seeking indemnification hereunder
(the "Indemnified Party") shall notify COMPANY (the "Indemnifying Party") in writing of any asserted
claim as soon as practicable. The Indemnified Party must authorize and permit the Indemnifying Party to
exercise sole control of the defense and disposition of any claim or action, including all decisions related
to litigation, appeal or settlement, provided, however, that the Indemnifying Party shall not settle any
claims or action that would be deemed to confess wrongdoing on the part of the Indemnified Party
without the prior written consent of the Indemnified Party, which consent shall not be unreasonably
withheld. Notwithstanding the foregoing, the Indemnified Party shall nevertheless be entitled to retain
separate counsel at its own cost to participate in such matter; however, the Indemnifying Party shall have
sole case management authority. Each Party hereto shall cooperate with the other in every reasonable
way to facilitate the defense of any such claim.
7.
DISCLAIMER
EXCEPT AS OTHERWISE SET FORTH IN THIS AGREEMENT, SALK'S CARRYING OUT
OF THE RESEARCH HEREUNDER, AND PROVISION OF RESULTS HEREUNDER, IS DONE "ASIS" WITH NO WARRANTY OF ANY KIND, AND EXCEPT AS EXPRESSLY SET FORTH IN THIS
AGREEMENT, SALK HEREBY DISCLAIMS ANY AND ALL WARRANTIES EXPRESS OR
IMPLIED (INCLUDING WITHOUT LIMITATION WARRANTIES OF MERCHANTIBILITY AND
FITNESS FOR A PARTICULAR PURPOSE) TO THE MAXIMUM EXTENT PERMISSIBLE BY
LAW.
8.
LIMITATION OF LIABILITY
SALK SHALL NOT BE LIABLE TO COMPANY OR ANY THIRD PARTY FOR ANY
INDIRECT, SPECIAL, INCIDENTAL, RELIANCE OR CONSEQUENTIAL DAMAGES OF ANY
KIND, REGARDLESS OF THE FORM OF ACTION WHETHER IN CONTRACT, TORT
(INCLUDING WITHOUT LIMITATION NEGLIGENCE), STRICT LIABILITY, OR OTHER LEGAL
OR EQUITABLE THEORY, EVEN IF THE OTHER PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES.
9.
PUBLICITY
Neither Party shall use the other Party’s name or insignia, or any adaptation of them, or the name
of the Principal Investigator or other researcher(s) of the other Party in any advertising, promotional or
sales literature, without the prior written approval of the other Party. Such planned publication, news
release or other public announcement shall be provided fifteen (15) days in advance for approval by Salk.
Any such approved use of SALK’s name by COMPANY shall not be done in a manner that could
reasonably constitute an endorsement of a commercial product or service. The restriction on use of
names shall not apply to: (i) annual or other periodical reports prepared by either Party in the normal
course of business; and (ii) any information required by law to be disclosed. In addition, the Parties may
acknowledge in any publication or other document COMPANY’ support for the investigations being
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pursued under this Agreement.
10.
CONFIDENTIALITY
A.
Each party acknowledges that it is to be given access to the Confidential Information of
the other party only for purposes of carrying out the Research Plan. Each party agrees that it will (a)
maintain in confidence such Confidential Information to the same extent such Party maintains its own
proprietary information; (b) not disclose such Confidential Information to any third party without prior
written consent of the other party; and (c) not use such Confidential Information for any purpose except
those permitted by this Agreement. Each party shall limit its disclosure of the Confidential Information
to employees within its own organization that have a legitimate need to receive such Confidential
Information in order to accomplish the Research Plan.
E.
Restricted Period. These restrictions upon disclosure and use of Confidential
Information shall continue during the Term and shall extend beyond the Term for a period of five (5)
years.
11.
INDEPENDENT CONTRACTOR
Neither Party shall be or be deemed to be the employee or agent of the other. Neither Party is
authorized to act as an agent for the other for any purposes and shall not act on behalf of the other Party
or enter into any contract, warranty or representation as to any matter.
12.
NOTICES
Any notices to be given hereunder shall be sufficient if signed by the Party giving same and
either
(a) mailed certified mail return receipt requested,
(b) made by overnight delivery, or
(c) faxed to other Party if the sender has evidence of successful transmission and if the
sender promptly sends the original by ordinary mail, in any event to the following
addresses:
If to COMPANY:
COMPANY ADDRESS
If to SALK:
Salk Institute for Biological Studies
10010 North Torrey Pines Road
La Jolla, CA 92037
Attn: Senior Director, Office of Technology Development
Facsimile: (858) 450-0509
With a copy to:
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Salk Institute for Biological Studies
10010 North Torrey Pines Road
La Jolla, CA 92037
Attn: General Counsel
Facsimile: (858) 824-9262
Notices mailed shall be deemed given on the date postmarked on the envelope. Notices sent by
overnight carrier shall be deemed given on the date received by such carrier, as indicated on the shipping
manifest or waybill. Notices sent by fax shall be deemed given on the date faxed.
13.
TERM AND TERMINATION
A.
Term. This Agreement shall be effective as of the Effective Date and shall
continue in full force and effect for XXXX (x) years from the Effective Date unless earlier
terminated in accordance with this Section 13.
B.
Termination by SALK with Cause. If COMPANY fails to meet any of its
obligations under this Agreement and shall fail to remedy these failures within sixty (60)
calendar days after receipt of written notice thereof, SALK shall have the option of terminating
this Agreement upon written notice thereof.
C.
Termination by COMPANY with Cause. In the event SALK fails to meet any of its
obligations under this Agreement and shall fail to remedy these failures within sixty (60) calendar days
after receipt of written notice thereof, COMPANY shall have the option of terminating this Agreement
upon written notice thereof. COMPANY shall retain all rights as provided in Section 6 subject to the
conditions therein.
D.
Termination without Cause.
Either Party may terminate this Agreement upon ninety (90) days notice if that Party determines, in its
sole discretion, that the project is no longer feasible or of interest., provided, however, that SALK shall
be entitled to any and all payments due and owed to SALK in the performance of the Research prior to
the date of the termination of the Agreement and for all uncancellable commitments incurred as of the
date of notice of termination but not to exceed the total amount committed under this Agreement.
COMPANY shall return Materials and any other materials, samples, documents, and information, which
Confidential Information provided to COMPANY by SALK in connection with this Agreement.
14.
ENTIRE AGREEMENT; MODIFICATION
This Agreement and Exhibits attached hereto contain the entire agreement and understanding
between the Parties with respect to the subject matter hereof, and merges all prior discussions,
representations and negotiations with respect to the subject matter of this Agreement.
15.
INSURANCE
A.
Coverage. Each Party shall, at its own expense, provide and keep in full force and effect
during the Term and for a period of two (2) years following the date of termination the following kinds
and minimum amounts of insurance, or self-insurance, as allowed by law:
i.
Workers' compensation insurance as required by the laws of the jurisdiction in
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which the Research is performed, and employer's liability insurance with limits of at least
$1,000,000 per occurrence.
ii.
Commercial general liability insurance which shall include bodily injury,
property damage, independent contractor coverage, completed operations or products coverage,
blanket contractual, and broad-form property damage with limits of at least $2,000,000 per
occurrence and a minimum limit of five million dollars ($5,000,000.00) for aggregate liability
insurance
iii.
occurrence.
Commercial automobile liability insurance with limits of at least $1,000,000 per
B.
Evidence of Coverage. Upon request of either Party, the other Party shall provide copies
of certificates of insurance, evidencing the coverage required hereunder.
16.
SURVIVORSHIP
The provisions of Articles 1, 3A, 4, 5, 6, 7, 8, 9, 10, 12, 14, 15, 16, 17, 18, 19, 20,21 and 22 shall
survive any expiration or termination of this Agreement.
17.
GOVERNING LAW
This Agreement shall be governed by the laws of the State of California without regard to its
conflict of laws provisions.
18.
SEVERABILITY; WAIVER
If any term, condition or provision of this Agreement is held to be unenforceable by a court
having proper jurisdiction for any reason, it shall, if possible, be interpreted rather than voided, in order
to achieve the intent of the parties to this Agreement to the extent possible. In any event, all other terms,
conditions and provisions of this Agreement shall be deemed valid and enforceable to the full extent of
the law. Any delay or waiver by a Party to declare a breach or seek any remedy available to it under this
Agreement or by law will not constitute a waiver as to any past or future breaches or remedies. Waiver
of one term, covenant or condition, shall not be construed as waiver of any other term, covenant or
condition.
19.
ASSIGNMENT
SALK may not assign or transfer this Agreement or any part hereof without the express written
consent of COMPANY. COMPANY may not assign its rights and obligations under this Agreement
without the prior written consent of SALK and any attempt to do so shall be null and void.
20.
EXCUSABLE DELAYS
Neither Party will be responsible for any failure or delay in performance of this Agreement if the
failure or delay is due to an event beyond the reasonable control and without the fault or negligence of
the Party seeking to excuse performance, including without limitation, acts of God, acts of terrorism, war,
labor disputes and strikes, fire, flood, riot, unforeseen delays in third-party provided transportation or
communications (a "Force Majeure Event"). Any Party seeking to excuse or delay performance due to a
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Force Majeure Event under this Section 21 will provide detailed written notice to the other Party of the
nature and anticipated duration of the delay. A Party claiming the benefit of a Force Majeure Event shall
use reasonable efforts to avoid or overcome the causes affecting performance and diligently fulfill all
outstanding obligations within thirty (30) days. In the event that any such Force Majeure Event
continues for in excess of sixty (60) days, either Party shall have the right to terminate this Agreement
upon thirty (30) days notice to the other Party, provided that, if the Force Majeure Event ceases within
such thirty (30) day period, this Agreement shall remain in full force and effect upon prior written notice
to the other Party.
21.
AFFILIATES
COMPANY provides services to its Affiliates and such Affiliates shall be permitted to use the
services, goods or other deliverables provided hereunder to the same extent as COMPANY.
22.
EXPORT CONTROL
The Parties agree that, with respect to the performance of this Agreement, it shall comply with
any and all applicable United States export control laws and regulations, as well as any and all
embargoes and/or other restrictions imposed by the Treasury Department’s Office of Foreign Asset
Controls.
IN WITNESS WHEREOF, each Party has caused this Research Agreement to be duly executed
by an authorized representative as of the Effective Date.
THE SALK INSTITUTE FOR
BIOLOGICAL STUDIES, SAN DIEGO,
CALIFORNIA
COMPANY
BY:
BY:
___________________________
NAME: Michelle A. Booden, Ph.D.
____________________________
NAME: ___________________________
TITLE: Senior Director
____________________________
Office of Technology Development
TITLE:
DATE: __________________________
DATE: ____________________________
Acknowledged by:
_________________________________
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Name:
Title: Principal Investigator
Date:____________________________
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EXHIBIT A
RESEARCH PLAN
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EXHIBIT B
BUDGET
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