Blueprint





 






Exhibit 10.1



 


CONFIDENTIAL
TREATMENT REQUESTED.



INFORMATION FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN



REQUESTED IS OMITTED AND MARKED WITH “****” OR
OTHERWISE



CLEARLY INDICATED. AN UNREDACTED VERSION OF THIS DOCUMENT
HAS



ALSO BEEN PROVIDED TO THE SECURITIES AND EXCHANGE
COMMISSION.


 



PILOT MATERIALS TRANSFER AGREEMENT


 


This
Pilot Materials Transfer Agreement ("Agreement") is made and
entered into as of August 22, 2016 ("EFFECTIVE DATE") by and among
Celgene Corporation, a Delaware corporation having a place of
business at 85 Morris Avenue, Summit, NJ, 07901 (together with its
subsidiaries and affiliates, hereinafter collectively referred to
as “Celgene”), and MetaStat, Inc., a Nevada corporation having an
address at 27 Drydock Ave., 2nd Floor, Boston, MA 02210-2377
("Company”).


 


WHEREAS
CELGENE and/or its Affiliates (as defined herein) has discovered,
developed, patented, owns and/or controls certain chemical and/or
biological compounds, reagents, cell lines and/or other proprietary
materials (“CELGENE MATERIALS” as further defined
herein);


 


WHEREAS
Company desires to perform, at Company, certain research with such
CELGENE MATERIALS (“PILOT PROJECT,” as further
described herein);


 


WHEREAS
Celgene is willing to provide Company with samples of the CELGENE
MATERIALS for the sole purpose of enabling Company to conduct such
PILOT PROJECT, under the terms and conditions set forth in this
Agreement;


 


THEREFORE, in
consideration of the mutual promises contained herein, the parties
agree as follows:


 


1
DEFINITIONS


 


 



1.1        


"CELGENE
INTELLECTUAL PROPERTY" means all intellectual property of Company,
including, without limitation, all U.S. and non-U.S. patents,
patent applications, patent rights, trademarks, trademark
applications, common law trademarks, Internet domain names, trade
names, service marks, service mark applications, common law service
marks, and the goodwill associated therewith, copyrights, in both
published and unpublished works, whether registered or
unregistered, copyright applications, franchises, licenses,
know-how, trade secrets, technical data, designs, customer lists,
confidential and proprietary information, whether such intellectual
property has been created, applied for or obtained anywhere
throughout the world.






 



 







 






 




1.2


"CELGENE
MATERIALS” means those certain chemical and/or biological
compounds, reagents, cell lines and/or other proprietary materials
discovered, developed, patented, owned and/or controlled by Celgene
and/or its Affiliates, and listed in Appendix A, which may be
updated from time to time only by mutual written agreement of the
parties.






 




1.3


"COMPANY
INTELLECTUAL PROPERTY" means all intellectual property of Company,
including, without limitation, all U.S. and non-U.S. patents,
patent applications, patent rights, trademarks, trademark
applications, common law trademarks, Internet domain names, trade
names, service marks, service mark applications, common law service
marks, and the goodwill associated therewith, copyrights, in both
published and unpublished works, whether registered or
unregistered, copyright applications, franchises, licenses,
know-how, trade secrets, technical data, designs, customer lists,
confidential and proprietary information, whether such intellectual
property has been created, applied for or obtained anywhere
throughout the world.






 




1.4

"CONFIDENTIAL
INFORMATION" means all materials, trade secrets or other
information, including, without limitation, proprietary information
and materials (whether or not patentable) regarding a party's
technology, products, business information or objectives, which is
designated as confidential in writing by the disclosing party,
whether by letter or by the use of an appropriate stamp or legend,
prior to or at the time any such material, trade secret or other
information is disclosed by the disclosing party to the other
party. Notwithstanding the foregoing to the contrary, (a)
materials, trade secrets or other information which is orally,
visually or physically disclosed by a party shall constitute
CONFIDENTIAL INFORMATION if the disclosing party indicated at the
time of such disclosure that such materials, trade secrets or other
information were confidential and, within twenty (20) days after
such disclosure, delivers to the other party a written document or
documents describing the materials, trade secrets or other
information and referencing the place and date of such oral, visual
or physical disclosure, and (b) materials, trade secrets or other
information which is disclosed in writing without an appropriate
letter, stamp or legend shall constitute CONFIDENTIAL INFORMATION
if the disclosing party, within ten (10) days after such
disclosure, delivers to the other party a written document or
documents describing the materials, trade secrets or other
information, and referencing the place and date of such written
disclosure. To the extent either party has received CONFIDENTIAL
INFORMATION from the other party prior to the EFFECTIVE DATE, it
shall be maintained in confidence in accordance with Section 2.12
of this Agreement.






 



1.5       


“PILOT
PROJECT" means the research and/or experimentation set forth on the
attached Appendix B pertaining to the CELGENE
MATERIALS.






 


 



 







 






2
MATERIAL
TRANSFER


 




2.1       


Transfer Of CELGENE
MATERIALS. Celgene agrees to deliver or have delivered to
Company the CELGENE MATERIALS for the PILOT PROJECT. Company shall
treat the CELGENE MATERIALS as the CONFIDENTIAL INFORMATION of
Celgene.






 




2.2


License to Company. Celgene
hereby grants to Company, for the Term of this Agreement, a
non-exclusive, nontransferable, non-sublicensable, fully paid-up,
royalty free license to use the CELGENE MATERIALS solely to conduct
PILOT PROJECT.






 




2.3


Use of CELGENE MATERIALS.
Company agrees to use the CELGENE MATERIALS solely to perform PILOT
PROJECT. Company further agrees that CELGENE MATERIALS will not be
made available, transferred, or provided to anyone outside of
Company and its affiliates directly involved in the PILOT PROJECT
without Celgene’s express prior written
approval.






 




2.4         


Return of Unused CELGENE
MATERIALS. Upon the earlier of (a) completion of the PILOT
PROJECT or (b) termination or expiration of this Agreement, Company
shall, at Celgene’s option, return to Celgene or destroy all
CELGENE MATERIALS in Company’s possession.






 




2.5       


No Human Use.
Company agrees that any and all CELGENE MATERIALS supplied by or on
behalf of Celgene will be used under suitable containment
conditions solely for laboratory use, including in vitro and in vivo laboratory studies, and will
not be used in humans.






 




2.6          


Celgene's Ownership
Rights; Company’s Ownership Rights.





 





(a)
Except as otherwise expressly provided in this Agreement, Celgene,
as applicable, shall retain all right, title, and interest in and
to the CELGENE MATERIALS and CELGENE INTELLECTUAL PROPERTY in
existence as of the EFFECTIVE DATE. Except as set forth in Section
2.2, no right or interest in or to any intellectual property rights
of Celgene is granted or implied hereunder.


 


(b)
Except as otherwise expressly provided in this Agreement, Company,
as applicable, shall retain all right, title, and interest in and
to the COMPANY INTELLECTUAL PROPERTY in existence as of the
EFFECTIVE DATE. No right or interest in or to any intellectual
property rights of Company is granted or implied
hereunder.


 




2.7


Work Product. Upon the earlier
of (a) completion of the PILOT PROJECT or (b) expiration or
termination of this Agreement, Company shall provide to Celgene a
written report setting forth all data and results obtained by
Company in the performance of the PILOT PROJECT (hereinafter the
“WORK PRODUCT”). The WORK PRODUCT shall be solely owned
by Celgene and treated by Company as the CONFIDENTIAL INFORMATION
of Celgene.






 



 







 






 




2.8        


Ownership Of Inventions
Arising Hereunder. The parties do not envision inventions
arising from the PILOT PROJECT, however in the event that
inventions are conceived and/or reduced to practice in connection
with Company’s performance of PILOT PROJECT, subject to
Section 2.6(b) hereof and to the extent such inventions relate to
the CELGENE MATERIALS, Celgene shall solely own all right, title
and interest in and to any such inventions (hereinafter the
“PROPRIETARY RIGHTS”), and Company hereby assigns their
entire right, title and interest in and to any PROPRIETARY RIGHTS
to Celgene.






 




2.9         


Term. Unless earlier
terminated as provided in Section 2.11, or extended by written
agreement of the parties, the Term of this Agreement shall be a
period of one (1) year, commencing on the EFFECTIVE
DATE.






 









2.10



Intentionally
Omitted.







 






2.11       


Termination.Either party
may terminate this Agreement at any time by giving the other party
thirty (30) days prior written notice.






 




2.12


Secrecy Obligations and
Exceptions. With regard to CONFIDENTIAL INFORMATION, the
receiving party agrees:






 


A. not to use
the CONFIDENTIAL INFORMATION except for the sole purpose of
performing under the terms of this Agreement; and


 


B. to
safeguard CONFIDENTIAL INFORMATION against disclosure to others
with the same degree of care as it exercises with its own
confidential information of a similar nature and in no event less
than a reasonable degree of care.


 



2.12.1 

The receiving party
shall not be prevented from using or disclosing any CONFIDENTIAL
INFORMATION:






 


A. which the
receiving party can demonstrate by pre-existing written records was
previously known to it; or


 


B. which is
now, or becomes in the future, public knowledge other than through
acts or omissions of the receiving party; or


 


C. which is
lawfully obtained by the receiving party from sources independent
of the disclosing party.


 



 







 






 




2.13   


Permitted Disclosures.
Notwithstanding Section 2.12, the receiving party shall have the
right to disclose CONFIDENTIAL INFORMATION to the extent required
by law after notice to the disclosing party and an opportunity for
the disclosing party to seek injunctive relief and/or an
appropriate protective order.






 




2.14


Press Releases. Any press
release, public announcement or similar publicity by the parties
with respect to this Agreement and/or the PILOT PROJECT shall be
subject to the prior consent of the other party, which consent
shall not be unreasonably withheld, unless such communication is
required to be made by law or pursuant to the rules and regulations
of the Securities and Exchange Commission or the New York Stock
Exchange listing requirements or an equivalent agency and after
consultation and coordination between the parties.






 




2.15


Use of Names. Neither party
shall use the name of the other party, nor any adaptation thereof,
in any advertising, promotional or sales literature or other
publication without the prior consent of such other party, which
shall not be unreasonably withheld.






 


 


3
REPRESENTATIONS AND
WARRANTIES


 




3.1    



By Company.
Company represents and warrants to Celgene that it has the lawful
right and authority to enter into this Agreement, and grant the
rights set forth herein, without the consent or approval of another
person or entity.






 




3.2


By Company. Company represents
and warrants that it is regularly engaged in conducting tests
in vitro or in laboratory
research animals and is qualified by training and/or experience to
conduct such tests, and the PILOT PROJECT, using the CELGENE
MATERIALS.






 




3.3


By Celgene. Celgene represents
and warrants that it has the lawful right and authority to enter
into this Agreement without the consent or approval of another
person or entity.






 




3.4


EXCEPT
AS OTHERWISE EXPRESSLY PROVIDED HEREIN, CELGENE PROVIDES NO
WARRANTIES FOR THE CELGENE MATERIALS, EXPRESS OR IMPLIED, EITHER IN
FACT OR BY OPERATION OF LAW, STATUTORY OR OTHERWISE, AND CELGENE
SPECIFICALLY DISCLAIMS ANY IMPLIED WARRANTY OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE.






 


4
MISCELLANEOUS
PROVISIONS


 




4.1        


Notices. All notices, requests,
demands and other communications required or permitted to be given
under this Agreement shall be in writing and shall be mailed by
first class mail, registered or certified, return receipt
requested, postage prepaid to the party to whom notice is to be
given (in which case such notice shall be deemed to have been duly
given on the third (3rd) day following the date of such sending),
or sent by facsimile or e-mail delivery of a “.pdf”
format data file and confirmed by first class mail, registered or
certified, return receipt requested, postage prepaid (in which case
such notice shall be deemed to have been duly given on the date of
the sending of such facsimile), and properly addressed as
follows:






 



 







 





 

To Celgene:  
  Celgene

 
Attn:
Research Alliance Development

 
10300
Campus Point Drive, Suite 100

 
San
Diego, CA 92121

 

Alliance@celgene.com


 


 

To
Company:  MetaStat,
Inc.

 
Attn:
Douglas A. Hamilton

 
27
Drydock Ave

 
Boston
MA, 02210

 

Dhamilton@MetaStat.com


 


Either
party may change its address for purposes of this Section 4.1 by
giving notice to the other party in the manner provided
above.


 




4.2


Entire Agreement. This
Agreement (together with all attached Appendices) constitutes the
full and complete agreement and understanding between the parties
concerning the subject matter contained herein, and shall supersede
any and all prior written and oral agreements concerning such
subject matter. This Agreement may not be amended, nor may any
provision be waived, without a written instrument executed by
Company and Celgene.






 




4.3


Waiver. No failure or delay by
any party to insist upon the strict performance of any term,
condition, covenant, or agreement of this Agreement, or to exercise
any right, power, or remedy hereunder or thereunder or consequent
upon a breach hereof or thereof shall constitute a waiver of any
such term, condition, covenant, agreement, right, power or remedy
or of any such breach or preclude such party from exercising any
such right, power, or remedy at any later time or
times.






 




4.4


Remedies. No right, power, or
remedy herein conferred upon or reserved to any party is intended
to be exclusive of any other right, power, or remedy, and each and
every right, power, and remedy of any party pursuant to this
Agreement or now or hereafter existing at law or in equity or by
statute or otherwise shall to the extent permitted by law be
cumulative and concurrent, and otherwise shall be in addition to
every other right, power, or remedy pursuant to this Agreement, or
now or hereafter existing at law or in equity or by statute or
otherwise. The exercise or beginning of the exercise by any party
of any one or more of such rights, powers, or remedies shall not
preclude the simultaneous or later exercise by any party of any or
all such other rights, powers, or remedies.






 



 







 






 




4.5


Number Headings. Headings in this
Agreement are included herein for the convenience of reference only
and shall not constitute a part of this Agreement for any
purpose.






 




4.6         


And Gender. Words in the
singular shall include the plural, and words in a particular gender
shall include either or both genders, when the context in which
such words are used indicates that such is the intent.






 




4.7


Validity. If for any reason any
clause or provision of this Agreement, or the application of any
such clause or provision in a particular context or to a particular
situation, circumstance or person, should be held unenforceable,
invalid or in violation of law by any court or other tribunal, then
the application of such clause or provision in contexts or to
situations, circumstances or persons other than that in or to which
it is held unenforceable, invalid or in violation of law shall not
be affected thereby, and the remaining clauses and provisions
hereof shall nevertheless remain in full force and
effect.






 




4.8


Assignment. Company shall have
no right to assign its rights or obligations under this Agreement
without the prior written consent of Celgene and any attempt by
Company to assign this Agreement or any right or obligation
hereunder in violation of this Section 4.8 shall be void and of no
effect. Celgene shall have the unrestricted right to assign its
rights and obligations under this Agreement upon prior written
notice to Company.






 




4.9


Independent Contractors.
Company and Celgene shall not be deemed to be partners, joint
venturers or each other's agents, and neither shall have the right
to act on behalf of the other except as expressly provided
hereunder or otherwise expressly agreed to in writing.






 




4.10


Governing Law. The Agreement
shall be governed by and construed in accordance with the laws of
the State of Delaware without regard to conflicts of law principles
that may result in the application of the substantive laws of
another jurisdiction, and each party submits to the exclusive
jurisdiction of the federal and state courts located in
Delaware.






 




4.11      
Counterparts.


This
Agreement may be executed in two (2) counterparts, and each
executed counterpart shall be considered an original of the same
agreement if each party has executed at least one
counterpart.





 





[SIGNATURE
PAGE FOLLOWS]





 








 






 


	Celgene
Corporation
	

 

	MetaStat,
Inc.
	 

	

 

	 
	By:	
/s/
James
R. Hentke  

	

 

	By:
	
/s/
Douglas
A. Hamilton


	
 

	
 

	

 

	

 

	
 


	Title:	
Executive Director,
NCD 
	

 

	Title:
	
President and
CEO
	
 

	
 

	

 

	

 

	
 


	Date:	
8/24/16	

 

	Date:	
8/22/2016
	
 

	
 

	

 

	

 

	
 







 


 


 


 





 








 







APPENDIX A


 


CELGENE
MATERIALS


 


 


 


 


	

CELGENE
ID #

	


Amount



Provided


 

	

Shipping
Address


	

 



****

	

 



3 grams (3 g)

	

 



Mike Peterson



27 Drydock Ave, 2nd Floor



Boston, MA 02210



(617) 531-0872


 







 


 





 








 







APPENDIX B


 


PILOT
PROJECT


 



****