SECURITIES AND EXCHANGE COMMISSION
Washington, DC 20549
FORM 8-K
CURRENT REPORT
Pursuant to Section 13 or 15(d) of the
Securities Exchange Act of 1934
Date of Report (Date of earliest event reported)
Mediscience Technology Corporation
(Exact name of Registrant as specified in its Charter)
New Jersey 0-7405 22-1937826
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(State or other (Commission File Number) (IRS Employer
jurisdiction of Identification
incorporation) Number)
1235 Folkestone Way, Cherry Hill, New Jersey 08034
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(Address of principal executive offices) (Zip Code)
(609) 428-7952
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Registrant's telephone number, including area code
N/A
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(Former name or former address, if changed since last report)
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Item 6. Other Materially Important Events
On June 15, 1996, Registrant, Mediscience Technology Corp. (OTCMDSC),
Mallinckrodt Medical Inc., St. Louis, MO and the Research Foundation of the City
University of New York entered into a researach agreement in the field of
imaging and photophysics related to the use of contrast dyes. Inventions
developed under this Agreement utilizing technology protected by patents owned
or licensed to registrant, Mediscience Technology Corp (OTCMDSC) will result in
royalties to be negotiated in good faith by the respective parties on a sharing
basis, Contract attached (Exhibit A) with Attachment "A" deemed to be
confidential and proprietary.
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RESEARCH AGREEMENT
THIS AGREEMENT, effective June 15, 1996 by and between Mediscience
Technology Corp., with its principal office at 100 Evergreen Avenue, Somerdale,
New Jersey 08083-1439 (hereinafter "MEDISCIENCE') and Research Foundation of
City University of New York on behalf of City College of The City University of
New York (hereinafter "FOUNDATION") with offices at Covenant Avenue at 138th
Street, New York 10031 and Mallinckrodt Medical, Inc. a corporation with its
principal offices at 675 McDonnell Boulevard, St. Louis, Missouri 63134
(hereinafter ("MMI"), is made under the following terms:
1. FOUNDATION will undertake studies and a research investigation under the
direction of Principal Investigator Dr. Robert R. Alfono, in the field of
Imaging and photophysics relating to the use of dye contrast agents in
turbid media. Specifically, the investigation will include the studies set
out in Attachment A. FOUNDATION shall use reasonable efforts to perform the
investigation in accordance with the terms and conditions of this
Agreement.
2. The investigation covered by this Agreement shall extend for a period of
one (1) year beginning June 15, 1996 and continuing through June 14, 1997.
3. For this investigation, FOUNDATION will furnish facilities of space and
laboratory equipment.
4. MMI will pay to FOUNDATION the cost of all direct labor, staff benefits,
supplies, and materials necessary for the execution of the work. To these
costs will be added indirect operating costs applicable at the time of
execution of this Agreement. The estimated sum required for this
investigation is one-hundred-fifty-thousand dollars ($150,000). A detailed
budget is set out in Attachment B.
The above is an estimate only and not a guarantee of cost; it being
understood that expenses will not be incurred nor obligations assumed in
excess of this sum without prior approval of MMI. Four (4) payments of
thirty-seven thousand five hundred dollars ($37,500) will be made by MMI to
FOUNDATION according to the following schedule: first payment on June 15,
1996; second payment on September 15, 1996; third payment on December 15,
1996; and fourth payment on March 15, 1997.
FOUNDATION will submit semiannual financial statements to MMI itemizing the
actual costs incurred for the preceding six (6) months. At the termination
of the Agreement, any overpayment due to actual costs being less than the
estimated costs above shall be promptly returned to MMI.
5. All records of this investigation are to be kept as directed by FOUNDATION
and are to be available to authorized representatives of MMI. Written
progress reports will be presented to MMI at three (3) month intervals.
There will be oral reports and discussions as reasonably requested by MMI,
and a final report. In addition, in order to effectively transfer the
technology to MMI, there will be visits at mutually agreeable times by MMI
personnel to the Principal Investigator's laboratory during the course of
this contract.
6. Before any person shall be permitted to engage in any work herein
contemplated, he shall sign FOUNDATION's standard form requiring that any
and all improvements, inventions, and discoveries which he may conceive or
make, solely or jointly or commonly with others, during the term of his
employment by FOUNDATION in connection with this investigation, shall at
all times and for all purposes, be the property of FOUNDATION, and he at no
expense to him, will execute applications for patents, United States and
foreign, and sign all other papers necessary to vest in FOUNDATION is
entitled hereunder.
7. MMI and FOUNDATION will not use directly or by implication the name of one
another, or the name of any member of the staffs thereof, or any
unpublished information or data relating to the investigation in any
publicity or advertising copy unless such copy is submitted and written
approval is obtained.
8. Results and Intellectual Property Rights. Any inventions made under this
investigation solely by employees of FOUNDATION (hereinafter "Sole
FOUNDATION Inventions") shall belong solely to FOUNDATION. Any inventions
made jointly as defined by U.S. Patent laws under this investigation by
employees of MMI and employees of FOUNDATION (hereinafter "Joint
Inventions") shall belong jointly to MMI and FOUNDATION, with each party
having an undivided one-half interest therein. In the event such inventions
arise under this Agreement, FOUNDATION agrees to disclose them promptly in
writing to MMI.
If the parties determine that a patent application should be prepared and
filed on any Sole FOUNDATION Invention, FOUNDATION shall select patent
counsel reasonably acceptable to MMI and MMI shall pay the cost of
preparing, filing, prosecuting and maintaining U.S. and foreign
applications and patents; however, MMI's expenses hereunder shall not
exceed ten thousand dollars ($10,000) per Sole FOUNDATION Invention without
MMI's written approval. FOUNDATION will keep MMI informed concerning such
Sole FOUNDATION Invention applications and patents and will consult with
MMI concerning prosecution of all such applications.
If MMI determines that a patent application should be prepared and filed on
any Joint Invention, MMI shall select patent counsel and MMI shall pay the
cost of preparing, filing, prosecuting and maintaining U.S. and foreign
applications and patents and will consult with FOUNDATION concerning
prosecution of all such applications. FOUNDATION shall cooperate with MMI
in preparing, filing, prosecuting and maintaining such Joint Invention
applications and patents.
If an invention is developed under this Agreement that involves the use of
contrast dyes as an integral component of an optical imaging instrument
utilizing time and space gating techniques and such time and space gating
techniques are otherwise protected by patents owned by or licensed to
MEDISCIENCE, then MEDISCIENCE will be entitled to a share of any royalties
received by the Foundation from the sale of products incorporating said
invention. A suitable royalty sharing agreement shall be negotiated in good
faith by FOUNDATION and MEDISCIENCE at the time of licensing of said
invention.
MMI may, upon reasonable notice to FOUNDATION sufficient to allow
FOUNDATION to maintain its patent rights, decide to discontinue paying the
expenses or to refrain from authorizing expenditures necessary to obtain
desired patent protection associated with any particular application or
patent. If MMI decides to discontinue or refrain from paying such expenses,
FOUDATION may pay such expenses. MMI will retain no further rights in any
application or patent for which MMI decides to discontinue or otherwise
refrain from paying such expenses and MMI agrees to execute any documents
which may be required to transfer MMi's rights to FOUNDATION.
9. FOUNDATION reserves the right to publish the results of this investigation.
Before publishing, orally presenting, or other form of public disclosure,
however, FOUNDATION agrees to submit copies of any manuscript proposed for
publication to MMI at least two (2) months in advance of the presentation
or publication, and if MMI does not ask to defer publications or
presentation within one (1) month after receipt of the manuscript so that
patent applications may be filed, FOUNDATION may proceed with publication.
In the event MMI asks to defer publication, in the case of Sole FOUNDATION
inventions, FOUNDATION shall not publish or otherwise disclose to any third
party any of the information contained in the manuscript until such time as
a patent application has been filed or, in the case of joint inventions,
the expiration of four (4) months from the date of submission of the
manuscript to MMI, whichever occurs first.
10. Option and License Provisions. In consideration of MMI funding this
investigation, FOUNDATION hereby grants to MMI the following options:
1) As to Sole FOUNDATION Inventions- for a period of six (6) months from
the conclusion of the investigation, the first right to an exclusive
worldwide license with the right to sublicense under any patent application
filed for a Sole FOUNDATION Invention and any patent issuing thereon, to
practice the invention covered by such patent application or patent on
reasonable terms. Each such license shall be: (1) for the maximum period of
exclusivity permitted, (2) at no license fee or other payment except for a
fee not to exceed the patenting costs of any Sole FOUNDATION invention, (3)
at a reasonable royalty rate not to exceed 8.0% of the net sales of any
product incorporationg such invention, (4) with appropriate due diligence
provisions, and (5) FOUNDATION shall retain a royalty free, non-exclusive,
non-transferable world-wide irrevocable license to use such invention or
discovery for internal, non-commercial research and educational purposes
only. Any costs and expenses incurred by MMI in connection with the
preparation, filing, prosecution and maintenance of U.S. and foreign patent
applications for Sole FOUNDATION Inventions so licensed may be deducted by
MMI from any royalty due to FOUNDATION for such payment period. Net sales
shall mean the revenues received less trade discounts allowed and taken,
allowance for returns, transportation charges included in such invoice
price and sales and other excise taxes included in such invoice price. No
such license or royalties shall be applied to any invention or discovery
made exclusively by MMI personnel.
2) As to Joint Inventions-for a period of six (6) months from the
conclusion of the investigation, the first right to an exclusive worldwide
license with the right to sublicense under any patent application filed for
Joint Invention and any patent issuing thereon, to practice the invention
covered by such patent application or patent on reasonable terms. Each such
license shall be: (1) for the maximum period of exclusivity permitted, (2)
at no license fee or other payment except for a fee not to exceed the
patenting costs of any Joint Invention, (3) at a reasonable royalty rate
not to exceed 4.0% of the net sales of any product incorporating such
invention, (4) with appropriate due diligence provisions, and (5)
FOUNDATION shall retain a royalty free, non-exclusive, non-transferable
world-wide irrevocable license to use such invention or discovery for
internal, non-commercial research and educational purposes only. Any costs
and expenses incurred by MMI in connection with the preparation, filing,
prosecution and maintenance of U.S. and foreign patent applications for
Joint Inventions so licensed may be deducted by MMI from any royalty due
FOUNDATION under any license agreement provided that, in any one payment
period, such deduction will not exceed fifty percent (50%) of the royalty
due to FOUNDATION for such payment period. Net sales shall mean the gross
revenues received less trade discounts allowed and taken, allowance for
returns, transportation charges included in such invoice price and sales
and other excise taxes included in such invoice price. No such license or
royalties shall be applied to any invention or discovery made exclusively
by MMI personnel.
3) As to Existing MEDISCIENCE Inventions - In return for payment to
MEDISCIENCE of the sum of twenty-five thousand dollares ($25,000), MMI will
have an option for two years to a non-exclusive license to any invention
developed in connection with the research investigation set forth in
Attachment A that utilizes intellectual property protected by the claims of
the pending patent identified and described in Attachment C. to exercise
that option MMI must indicate its interest within 90 days of notification
by FOUNDATION of such invention. A licensing will then be developed in good
faith and by mutual agreement of MMI, MEDISCIENCE, and FOUNDATION,
including provisions for royatlies and minimum royalties not to exceed 8.0%
and sublicensing provisions that require all sublicenses to be approved by
MEDISCIENCE and FOUNDATION. All such royalties and minimum royalties will
accrue to FOUNDATION. It is understood that, by virtue of MEDISCIENCE's
interest in the pending patent referred to above, FOUNDATION will pay over
to MEDISCIENCE 50% of all royalty or sublicensing income received from MMi
by Foundation in connection with said licensing agreement.
11. If the investigation covered by this contract shall not be completed by
FOUNDATION, and the parties shall desire that the investigation continue
beyond said date, it is understood that the investigation may be extended
for additional periods under terms as may be mutually agreed upon in
writing.
12. Any notices to be given hereunder shall be in writing and shall be deemed
to be sufficiently given when delivered personally or sent by registered or
certified mail, postage prepaid, and if intended for FOUNDATION ADDRESSED
TO:
Dr. Alvin Halpern
City College of The City University of New York
Covenant Avenue
138th Street
New York, NY 10031
and if intended for MMI addressed to:
Group Vice President, Science and Technology
Mallinckrodt Medical, Inc.
675 McDonnell Blvd.
P.O. Box 5840
St. Louis, MO 63134
Attention: J. Eugence Fox, Ph.D.
and if intended for MTC addressed to:
Peter Katevatis, Esq.
Chairman
100 Evergreen Avenue
Somerdale, NJ 08083-1439
Any party may change the address for receiving notice, upon notice to the
other party given in the manner aforesaid.
14. This Agreement shall be construed and enforced in accordance with and
governed by the laws of the State of Missouri.
15. This Agreement constitutes the entire Agreement between the parties hereto
with respect to the subject matter hereof and any modifications of this
Agreement shall be in writing and shall be signed by both parties. There
are no understandings, representations or warranties except as herein
expressly set forth and no rights are granted except as expressly set forth
herein.
16. MMI reserves the right to terminate this investigation in the event the
Principal Investigator is no longer available for any reason to direct the
investigation.
17. FOUNDATION agrees for a period of five (5) years from the date of this
Agreement to keep confidential and to use only for the purposes of this
Agreement all information designated in writing as being confidential
furnished by MMI in connection with the research to be conducted under this
Agreement except to the extent that such information was already known to
FOUNDATION, or is or later becomes publicly known under circumstances
involving no breach of this Agreement by FOUNDATION, or is lawfully
furnished to FOUNDATION without restriction on disclosure by a third party,
or is rquired to be disclosed by law or by court order of appropriate
jurisdiction. FOUNDATION agrees that it will require of those persons
assigned to the program and to whom any such confidential information will
be disclosed the same obligations of confidence and non-use consistent
herewith.
18. Each party hereto agrees to be responsible and assume liability for its own
wrongful or negligent acts or omissions or those of its officers, agents or
employees to the full extent required by law.
19. In performing services hereunder, the status of FOUNDATION will be that of
an independent contractor and not that of part-time employees and
FOUNDATION will be entitled to any of the benefits made available to
employees of MMI.
MEDISCIENCE TECHNOLOGY CORP MALLINCKRODT MEDICAL, INC.
BY: /s/Peter Katevatis BY: /s/J. Eugene Fox
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Peter Katevatis J. Eugene Fox
Chairman Group Vice President
Science and Technology
June 6, 1996 June 10, 1996
RESEARCH FOUNDATION OF CITY UNIVERSITY OF NEW YORK
BY: /s/Thomas Facciolo
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Thomas Facciolo
Vice-President
July 10, 1996
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SIGNATURES
Pursuant to the requirement of the Securities Exchange Acot of 1934, the
Registrant has duly caused this report to be signed on its behalf by the
undersigned hereunto duly authorized.
Mediscience Technology Corporation
/s/Peter Katevatis
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Peter Katevatis
Esq., Chairman
Dated:
