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EXHIBIT 10.9
CELANESE-SYMYX COLLABORATION AGREEMENT
This COLLABORATION AGREEMENT (the "Agreement"), effective as of August
1, 1998 (the "Effective Date"), is made by and between Symyx Technologies, Inc.,
a California corporation, having a principal place of business at 000 Xxxxxxx
Xxxxxxx, Xxxxxxxxx, Xxxxxxxxxx 00000 ("Symyx"), and Celanese Ltd., having a
principal place of business at 0000 Xxxx XXX Xxxxxxx, Xxxxxx, Xxxxx 00000
("Celanese").
BACKGROUND
A. Symyx owns and is developing novel, proprietary methods for the
combinatorial preparation and screening of novel materials;
B. Symyx entered into a Collaboration Agreement dated May 1, 1997
("CA1") with Corporate Research & Technology of Hoechst AG, now
known as Aventis Research & Technology ("AR&T"), which agreement
reflected their mutual desire to collaborate to conduct
materials discovery research and development focused on the
discovery and enhancement of [******]
C. AR&T and Celanese, both wholly owned directly or indirectly by
Hoechst AG, have agreed to divide among themselves the rights
and obligations originally assumed by AR&T in CA1;
D. Symyx desires to collaborate with Celanese and is willing for
Celanese and AR&T to divide among them the rights and obligation
of AR&T in CA1; and
E. Concurrently with the execution of this Agreement, Symyx and
AR&T have entered into an amendment of CA1 for the purpose of
permitting Symyx to enter into this Agreement and convey to
Celanese certain rights and licenses granted herein on the terms
and conditions set forth herein.
NOW, THEREFORE, for and in consideration of the covenants, conditions
and undertakings set forth herein, it is agreed by and between the parties as
follows:
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ARTICLE 1
DEFINITIONS
As used in this Agreement, the terms set forth in Exhibit A hereto will
have the meanings set forth therein.
ARTICLE 2
RESEARCH PROGRAM
2.1 Research Activities. The parties shall conduct collaborative
research in connection with the Research Program.
2.1.1 Collaborative Research. The parties intend to conduct the
Research Program on a collaborative basis, and to cooperate to identify Lead
Compounds in the Active Projects.
2.1.2 Symyx Responsibilities. During the term of the Research
Program Symyx shall use its reasonable efforts to identify Lead Compounds in
Active Projects. In this regard, Symyx will prepare and screen Libraries in the
Research Program, one or more of which Libraries may be prepared by Symyx
outside the Research Program and, at Celanese's request, shall provide to
Celanese gram size samples of any Lead Compound, at no additional charge. Symyx
will use commercially reasonable efforts to provide ten (10) gram size samples;
however, if such sample cannot be provided at a commercially reasonable cost,
Symyx will so notify Celanese and the parties shall meet to discuss how to
proceed. Symyx shall keep the Research Field Committee ("RFC", as defined
hereafter, Section 3.2.1) responsible for a particular Active Field fully
informed of its activities in respect of each Active Project within such Active
Field. It is understood that the Libraries are regularly used by Symyx and,
subject to the rights granted to Celanese under this Agreement, that Symyx can
use and screen the Libraries for any use on its own behalf or for third parties.
2.1.3 Celanese Responsibilities. Celanese shall use reasonable
efforts, to provide Symyx with support and assistance useful or necessary for
the conduct of the Research Program. Celanese shall keep the RFC responsible for
an Active Project apprised of the progress and technical issues relating to the
development of Agreement Compounds and commercialization of Products resulting
from such Active Project.
As used herein, Agreement Compound shall mean any Lead Compound [******]
As used herein, Product shall mean any product which (i) incorporates an
Agreement Compound, or (ii) utilizes an Agreement Compound in its
manufacture, or (iii) is made utilizing a patentable method or
patentable process within the Program Technology as to which Symyx has
an interest.
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2.2 Active Fields.
2.2.1 (a) Initial Active Fields. The Research Program shall
initially include only research activities related to the Celanese Group.
(b) [******]
As used herein Field Minimum Term shall mean with respect to any Active
Field, the minimum time required to conduct a comprehensive evaluation
of the utility of combinatorial technologies within such Active Field,
as established by the Executive Committee or as expressly set forth
herein.
2.2.2 Active Field Exclusivity.
(a) Subject to Celanese's continuing payment to Symyx of
the Field Minimum Funding payments for the applicable Active Field, Symyx will
not conduct research on any Active Project or Inactive Project within such
Active Field for any third party or on its own behalf other than under this
Agreement.
(b) [******]
(c) [******]
2.2.3 Field Reactivation.
(a) [******].
(b) [******]
2.3 Inactive Fields.
2.3.1 [******]
2.3.4 [******]
2.3.5 Loss of Inactive Field Exclusivity.
(a) [******]
(b) [******]
2.3.6 Activation of Inactive Field. The Executive Committee (as
defined hereafter, Section 3.1.1) shall determine whether to activate any
Inactive Field and convert it into
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an Active Field. At such time as the Executive Committee determines that an
Inactive Field should be pursued in the Research Program, it shall activate such
field substantially in accordance with Exhibit C on terms substantially
identical to existing Active Fields.
2.3.7 Adding Inactive Fields. In the event that Celanese wishes
to propose as additional potential Inactive Fields other areas for inclusion on
Exhibits D or E, Symyx agrees to consider such proposals in good faith.
2.4 Projects.
2.4.1 Identification of Lead Compounds. The procedure for the
identification of Lead Compounds by Symyx is set forth on Exhibit B hereto.
2.4.2 Inactive Projects. Inactive Projects may be activated by
Celanese or the RFC for a particular Active Field as set forth on Exhibit C
hereto.
2.4.3 Termination of Active Projects.
(a) RFC. The RFC for a particular Active Field may
recommend to the EC that the research activities with respect to a particular
Active Project should be terminated. If the EC approves such a termination, the
RFC for the applicable Active Field shall rebudget all remaining Active Projects
within the Active Field. Any Active Project terminated by the applicable RFC
shall be deemed an Inactive Project.
(b) Celanese. In the event that the RFC fails to agree
to terminate a particular Active Project, during the period that Celanese is
paying Field Minimum Funding for the applicable Active Field, Celanese has the
right to terminate any Active Project within such Active Field. In any such
event, promptly following Celanese's notice that it intends to terminate a
particular Active Project, the RFC for the applicable Active Field shall
rebudget all remaining Active Projects within the Active Field. Symyx shall use
reasonable efforts to cease research with respect to such Active Project as soon
as practicable.
2.5 Records; Inspection
(a) Research Program. Symyx and Celanese shall maintain records
of the Research Program (or cause such records to be maintained) in sufficient
detail and in good scientific manner as will properly reflect all work done and
results achieved in the performance of the Research Program (including
information sufficient to establish dates of conception and reduction to
practice of inventions).
(b) Research Program Expenditures. Symyx shall keep complete,
true and accurate books of account and records for the purpose of determining
Symyx's Research Expenses incurred in connection with the performance of the
Research Program. Symyx shall
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make quarterly written reports to the EC with regard to all Research Expenses
expended in a particular quarter, by Active Field, within ninety (90) days after
the end of such calendar quarter. Such books and records shall be kept at the
principal place of business of Symyx for at least two (2) years following the
end of each calendar year. Such records will be open for inspection during such
two (2) year period, by an independent auditor of Celanese, for the purpose of
verifying the financial reports submitted by Symyx. Such inspections may be made
no more than once each calendar year, at reasonable times mutually agreed by
Symyx and Celanese. Celanese's auditor will be obliged to execute a reasonable
confidentiality agreement prior to commencing any such inspection.
2.6 Post-Research Program Activities. Celanese shall, at Celanese's or
its Sublicensees' expense, be responsible, on a Lead Compound-by-Lead Compound
basis, for conducting all development of Agreement Compounds and Products
following the commencement of Celanese's internal analysis with respect to a
particular Lead Compound, and all commercialization of Products to which
Celanese retains rights under this Agreement.
2.7 Limited Activities
2.7.1 Active Projects. [******]
(a) [******]
(b) [******]
2.7.2 Exclusive Commercial Development by Celanese. In the event
that Celanese is diligently developing a particular Agreement Compound or
commercializing a particular Product or otherwise retaining exclusive rights to
such Agreement Compound or Product as provided in Article 4 and Sections 7.1,
7.1.1, 7.2.1 or 7.2.2, Symyx shall not enter into an agreement with a third
party, or conduct any activity on its own behalf or on behalf of a third party,
where such agreement or activity has the purpose of developing products which
compete in the same primary market, for the same end use and for at least some
of the same customers as such Agreement Compound or Product.
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ARTICLE 3
MANAGEMENT
3.1 Executive Committee.
3.1.1 Responsibility. Symyx and Celanese shall establish an
Executive Committee (the "EC") to (i) oversee the direction of the overall
relationship between Symyx and Celanese, (ii) activate and terminate Fields and
Projects within such Fields including establishing Field and/or Product Group
Definitions, (iii) approve budgets for Active Projects (including without
limitation, any capital expenditures or other expenses (e.g., payments to third
parties for licenses from third parties) necessary to conduct such Active
Projects), and (iv) resolve any issues which a RFC is unable to resolve. The EC
shall have the authority, but not the obligation, to convert one or more
Inactive Fields into Active Fields.
3.1.2 Membership. The EC is comprised of an equal number of
representatives from each of Celanese and Symyx, with each party's
representatives selected by the party. Either party may replace their respective
EC members at any time, upon written notice to the other party.
3.1.3 Meetings. EC shall meet at least twice per year at
locations agreed by the parties. With the consent of the parties, other
representatives of Symyx or Celanese may attend EC meetings as nonvoting
observers. Each party shall be responsible for all of its own expenses
associated with attendance of such meetings. EC members may participate in any
such meeting in person, by telephone, or by televideo conference. Symyx shall
prepare minutes of each EC meeting, which minutes shall be approved and signed
by EC representatives of each party.
3.1.4 Decision Making. A quorum of the EC shall require a
majority of the members of the EC, including at least one member representing
Celanese and one representing Symyx. Decisions of the EC shall be made by
unanimous approval. In the event the EC is unable to resolve an issue, it will
be referred to the President of Celanese and the Chairman of the Board of Symyx
for resolution, and such persons shall meet to discuss such matter within thirty
(30) days. Any matter such persons are unable to resolve will be submitted to
binding arbitration pursuant to Section 14.12.
3.2 Research Field Committees.
3.2.1 Responsibilities. Celanese and Symyx will establish a
Research Field Committee ("RFC") to oversee, review and recommend direction of
each Active Field. The responsibilities of each Research Field Committee shall
include: (i) establishing the criteria for a Lead Compound, (ii) monitoring and
reporting research progress for the Active Field for which it is responsible,
and ensuring open exchange between both parties regarding such Active Projects,
(iii) preparing and prioritizing lists of Inactive Projects for the Active
Field, (iv) making recommendations regarding the activation of Inactive Projects
within the Active Field,
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(v) making recommendations regarding the approval of Project Plans, and the
approval of budgets for Active Projects, (vi) coordinating all patent activities
in accordance with Article 8 hereof, (vii) determining if any Active Project has
been successfully concluded and become a finished project, and (viii)
determining the specific criteria for demonstrating Proof of Principle for the
Active Field.
3.2.2 Membership. Each RFC shall include an equal number of
representatives of each of Celanese and Symyx, up to three (3) persons from each
party, each party's representatives selected by that party. Symyx and Celanese
may each replace its RFC representatives at any time, upon written notice to the
other party. Each RFC shall be chaired as agreed by the parties. From time to
time, the RFC may establish subcommittees, such as a Patent Committee, to
oversee particular projects or activities, and such subcommittees will be
constituted as the RFC agrees.
3.2.3 Meetings. During the term of the applicable Active
Project, each RFC shall meet quarterly at regular intervals, or more frequently
as agreed by the parties, at such locations as the parties agree. With the
consent of the parties, other representatives of Symyx or Celanese may attend
RFC meetings as nonvoting observers. Each party shall be responsible for all of
its own expenses associated with attendance of such meetings. RFC members may
participate in any such meeting in person, by telephone, or by televideo
conference. Symyx shall prepare minutes of each RFC meeting, which minutes shall
be approved and signed by RFC representatives of each party.
3.2.4 Decision Making. A quorum of the RFC shall require a
majority of the members of the RFC, including at least one member representing
Celanese and one representing Symyx. Decisions of each RFC shall be made by
unanimous approval. In the event that unanimous agreement on any matter is not
achieved within the RFC, the matter will be referred to the EC for resolution.
ARTICLE 4
LICENSES
4.1 License; Option
4.1.1 Exclusive License Grant to Celanese. Symyx agrees to grant
and does hereby grant to Celanese an exclusive, worldwide, royalty-bearing
license, with unrestricted right of sublicense, to Symyx's interest in Agreement
Compounds and Program Technology (excluding any CC Technology) for purposes of
commercializing, including all associated activities, any and all Products which
result from the conduct of, and are within the scope of, an Active Project. At
such time as Celanese's exclusivity for a particular Active Field terminates,
the licenses granted above shall continue in full force and effect.
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4.1.2 [******]
(a) [******]
(b) [******]
4.1.3 Initial Product Group Definitions. The Product Group
Definition as of the Effective Date of this Agreement is the Celanese Group
definition.
4.2 Nonexclusive License Grant to Celanese. Symyx agrees to grant and
does hereby grant to Celanese a non-exclusive, worldwide, royalty-free license,
with the right of sublicense, as to any patent rights within the Symyx
Technology or Program Technology described in the following sentence, in each
case, solely to the extent such license is necessary to enable Celanese or its
Sublicensee to exercise the rights and privileges granted in Sections 4.1.1 and
4.1.2. Such license shall extend to any Symyx Technology or Program Technology
owned or controlled by Symyx as of the Effective Date, and to the extent that
Symyx has the right to grant such rights, to any such Symyx Technology or
Program Technology owned or controlled by Symyx after the Effective Date.
4.3 Sublicensees. Celanese shall provide Symyx with at least the
following information with respect to each of Celanese's sublicensees:
(a) the identity of such Sublicensee;
(b) a description of the rights granted including scope as to
both subject matter and territory; and
(c) a description of the information and materials furnished
each sublicensee to the extent such items relate to this Agreement.
Each sublicense granted by Celanese shall be written and shall be and
consistent with all the terms and conditions of this Agreement and subordinate
thereto. Celanese shall remain responsible to Symyx for the compliance of each
Sublicensee with the financial and other obligations due under this Agreement.
Notwithstanding the above, such sublicenses may impose financial obligations on
such sublicensee different than those imposed on Celanese herein. No sublicense
granted by Celanese may be further assigned or further transferred by any
sublicensee without the prior written consent of Symyx, which consent shall not
be unreasonably withheld; provided, any such a sublicense may be further
assigned by a Sublicensee without the consent of Symyx in connection with a
transfer of substantially all the business of such Sublicensee to which such
sublicense relates.
4.4 Permitted Uses. Celanese further agrees not to use or commercialize
Agreement Compounds, except as licensed under Section 4.1.1 or 4.1.2 of this
Agreement, or as licensed under a separate agreement between the parties.
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4.5 Research License. Notwithstanding Section 4.1 above, Symyx shall
retain the right to make, have made and use all library compounds for its own
research purposes (i.e., to develop, improve and validate its technology and
intellectual property). However, if such research would adversely affect
Celanese's exclusive rights under this Agreement, Symyx shall not conduct such
research or have such research conducted on its behalf.
4.6 Third Party Rights. It is understood that Symyx is in the business
of conducting research and development with third parties, and that Symyx will
grant such third parties rights after the Effective Date to acquire licenses for
compounds derived from such libraries similar to Celanese's rights under this
Article 4. It is understood and agreed that, even if Symyx complies with its
obligations under this Agreement, compounds provided to third parties in the
course of Symyx's other business activities may result in third party patent
applications and patents, including patent applications and patents owned by
such third parties, or owned jointly by Symyx and such third parties, which
could conflict with patent applications and patents owned by Celanese, or
jointly owned by Celanese and Symyx hereunder. Symyx shall use reasonable care
to avoid any such conflict and shall at a minimum take the steps enumerated in
Section 4.7.
4.7 No Conflict. During the term of this Agreement Symyx shall not grant
any license which conflicts with the rights granted to Celanese in Sections
4.1.1, 4.1.2 and 4.2 and shall not grant any rights inconsistent with the
exclusive rights set forth in Article 2, including Sections 2.7.1 and 2.7.2.
[******]
4.8 [******]
4.9 Independent Development. Celanese shall notify Symyx within thirty
(30) days following the commencement of the Lead Compound evaluation activity
(or any equivalent process conducted by a third party with access to or
knowledge of any Agreement Compounds, Program Technology or Symyx Technology
under license from Celanese) with respect to any compound, mixture or
composition of matter developed by Celanese within ten (10) years of the
commencement of the Lead Compound evaluation activity with respect to the Lead
Compound or Derivative Compound from which such Agreement Compound was derived,
where such compound, mixture or composition of matter bears a reasonable
relationship to an Agreement Compound on a structural and functional basis. If
Celanese believes any such compound, mixture or composition of matter is not an
Agreement Compound, it shall provide Symyx with a detailed explanation why such
compound, mixture or composition of matter is not an Agreement Compound. In the
event that Celanese fails to notify Symyx within the thirty (30) day period
specified above that it believes any such compound, mixture or composition of
matter is not an Agreement Compound, Celanese shall bear the burden of
establishing that it independently developed such Agreement Compound without any
reference to or use of any Symyx Technology or Program Technology. If a dispute
arises between the parties regarding whether a particular, mixture or
composition of matter compound is an Agreement Compound, the dispute shall be
settled by binding arbitration pursuant to Section 14.12 herein. In any such
arbitration,
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Celanese shall bear the burden of establishing that it independently developed
such Agreement Compound without any reference to or use of any Symyx Technology
or Program Technology. Celanese may demonstrate such independent development
with (i) experimental data showing the compound, mixture or composition of
matter was synthesized and tested by Celanese for the identical use for which it
is being developed, prior to the date of identification of such compound in the
Research Program, or (ii) patents or patent applications which claim such
compound, mixture or composition of matter for the identical use for which it is
being developed, which patent applications or patents were filed by Celanese or
a third party prior to the date of identification of such compound in the
Research Program.
4.10 CA1; Coordination of AR&T Rights.
4.10.1 [******]
4.10.2 [******]
ARTICLE 5
PAYMENTS
5.1 Research Program Payments. Celanese agrees to pay to Symyx Research
Expenses for the conduct of the Research Program, in a total not less than the
Field Minimum Funding for all Active Fields. [******]
5.1.1 Field Minimum Funding.
(a) [******]
(b) [******]
(c) Modifications. The Field Minimum Funding amounts in
this Section 5.1.1 may only be changed with unanimous approval of the EC.
5.1.2 Reconciliation. Symyx shall endeavor to expend Research
Expenses in the quarter for which they are paid. In the event the Research
Expenses budgeted and paid by Celanese for any quarter for a particular Active
Field are not expended on such Active Field during that quarter, the remainder
shall be carried forward and may be expended on the Active Field during the
subsequent periods. Notwithstanding the above, in the event that five hundred
thousand dollars ($500,000) or more in Research Expenses remains unexpended at
the end of any quarter, then Symyx shall notify the EC and the EC shall
determine how future Research Expense payments shall be adjusted so that the
aggregate unexpended amount of Research Expense payments will be reduced to less
than five hundred thousand dollars ($500,000) in the next quarter. In the event
of a dispute regarding Symyx's expenditure of Research Expenses
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provided by Celanese for a particular Active Field, Celanese may, with notice to
Symyx, limit its Research Expenses for such Active Field to the applicable Field
Minimum Funding until such dispute is resolved pursuant to arbitration;
provided, in such event Symyx shall have no obligation to conduct any research
activities in connection with such Active Field which cannot be fully supported
by such Field Minimum Funding.
5.1.3 Quarterly Payments. Celanese will make payments for the
Research Program equal to the greater of (i) the total Field Minimum Funding for
all Active Fields, or (ii) the budgeted Research Expenses approved by the EC.
The amounts to be paid in connection with the Research Program with respect to
each twelve (12) month period shall be paid quarterly in advance. The initial
payment was made under the CA1 on or about February 1, 1997, and payments under
this Agreement shall be made on or before the applicable quarterly anniversaries
of that date. All such payments are non-refundable.
5.2 Royalties.
5.2.1 [******]
5.2.2 [******]
5.2.3 Royalty Term. Celanese's obligation to pay royalties to
Symyx shall continue for each Product until the later of (i) twelve (12) years
after the first commercial sale of such Product, or (ii) the expiration of the
last to expire issued patent covering such Product within the Program
Technology, or the Celanese Technology described in subsections 1.5(i) or (iii).
Notwithstanding any other provision of this Agreement, all royalty obligations
of Celanese or its sublicensee for a particular Product shall cease twenty (20)
years from the date of the first commercial sale of such Product.
5.2.4 Fully-Paid Licenses. Upon expiration of the royalty
obligations with respect to a particular Product, Celanese shall retain fully
paid licenses under the intellectual property licensed in Section 4.1.1 for the
sole purpose of continued manufacture and sale of such Product.
5.2.5 Third Party Royalties. Celanese is responsible for all
payments due to third parties for the manufacture, sale, or use of Products by
Celanese, its Affiliates or Sublicensees.
5.2.6 Competing Products. If a third party commercializes a
product which incorporates or is made using a compound, which would be a
Derivative Compound under the terms of this Agreement if developed by Celanese
or its designee, and such product is competitive with a Product subject to this
Agreement which incorporates or is made using a Derivative Compound, Celanese
may notify Symyx, and in such event, the parties agree to renegotiate in good
faith the royalty due from Celanese to Symyx with respect to such Product. In
any such negotiation, the parties shall consider relevant factors, including,
without limitation,
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(i) the principles set forth in Section 5.2.1 (i), and (ii) the commercial
impact of the competing product on the relevant Product.
ARTICLE 6
PAYMENTS; BOOKS AND RECORDS
6.1 Royalty Reports and Payments. After the first commercial sale of a
Product on which royalties are payable by Celanese or its Sublicensees
hereunder, Celanese shall make quarterly written reports to Symyx within ninety
(90) days after the end of each calendar quarter, stating in each such report,
separately for Celanese and each Sublicensee, the number, description, and
aggregate Net Sales of each Product sold during the calendar quarter upon which
a royalty is payable under Section 5.2.1 above. Concurrently with the making of
such reports, Celanese shall pay to Symyx royalties due at the rates specified
in such Sections.
6.2 Payment Method. All payments due under this Agreement shall be made
by bank wire transfer in immediately available funds to a bank account
designated by Symyx. All payments hereunder shall be made in U.S. dollars. In
the event that the due date of any payment subject to Article 6 hereof is a
Saturday, Sunday or national holiday, such payment may be paid on the following
business day. Any payments that are not paid within ten (10) days of the date
such payments are due under this Agreement shall bear interest to the extent
permitted by applicable law at the prime rate (as reported by the Bank of
America, San Francisco, California, or successor company, on the date such
payment is due) plus an additional two percent (2%), calculated on the number of
days such payment is delinquent.
6.3 Place of Royalty Payment and Currency Conversions. If any currency
conversion shall be required in connection with the calculation of royalties
hereunder, such conversion shall be made using the selling exchange rate for
conversion of the foreign currency into U.S. Dollars, quoted for current
transactions reported in The Wall Street Journal for the last business day of
the calendar quarter to which such payment pertains.
6.4 Records; Inspection. Celanese and its Sublicensees shall keep
complete, true and accurate books of account and records for the purpose of
determining the royalty amounts payable under this Agreement. Such books and
records shall be kept at the principal place of business of such party, as the
case may be , for at least two (2) years following the end of the calendar
quarter to which they pertain. Such records will be open for inspection during
such two (2) year period by a public accounting firm to whom Celanese has no
reasonable objection, solely for the purpose of verifying royalty statements
hereunder. Such inspections may be made no more than once each calendar year, at
reasonable times and on reasonable notice. Inspections conducted under this
Section 6.4 shall be at the expense of Symyx, unless a variation or error
producing an increase exceeding five percent (5%) of the amount stated for any
period covered by the inspection is established in the course of any such
inspection, whereupon all reasonable costs relating to the inspection for such
period and any unpaid amounts that are discovered will
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be paid promptly by Celanese together with interest thereon from the date such
payments were due at the prime rate (as reported by the Bank of America, San
Francisco, California, or successor company), plus an additional two percent
(2%) per annum. Symyx agrees to hold in strict confidence all information
concerning royalty payments and reports, and all information learned in the
course of any audit or inspection, except to the extent necessary for Symyx to
reveal such information in order to enforce its rights under this Agreement or
if disclosure is required by law. The public accounting firm employees shall
sign a customary confidentiality agreement as a condition precedent to their
inspection, and shall report to Symyx only that information which would be
contained in a properly prepared royalty report by Celanese.
6.5 Tax Matters. All royalty amounts and other payments required to be
paid to Symyx pursuant to this Agreement shall be paid with deduction for
withholding for or on account of any taxes (other than taxes imposed on or
measured by net income) or similar governmental charge imposed by a jurisdiction
other than the United States ("Withholding Taxes") to the extent Symyx and/or
its Affiliates or their successors has the lawful rights to utilize the
Withholding Taxes paid by Celanese as a credit against Symyx's and/or its
Affiliates regular U.S. tax liability. Celanese shall provide Symyx a
certificate evidencing payment of any Withholding Taxes hereunder.
ARTICLE 7
DUE DILIGENCE
7.1 Due Diligence. Celanese shall use reasonable and diligent efforts,
on an Agreement Compound-by-Agreement Compound and Product-by-Product basis, to
develop and commercialize Products. The following parameters shall be used to
evaluate Celanese's diligence prior to the commencement of commercialization.
7.1.1 Lead Compound Validation Activity.
(a) Within six (6) months of having a sufficient
quantity to test, Celanese will confirm whether or not the Lead Compound meets
the criteria set by the RFC and shall notify Symyx if such Lead Compound is of
sufficient interest to warrant consideration of Celanese starting an expanded
evaluation project (such notice referred to as a "Validation Notice"); provided,
Celanese shall have no obligation within any twelve (12) month period to perform
such validation activity for more than eight (8) Agreement Compounds provided by
Symyx, with a minimum of one Agreement Compound in each Active Project for which
Symyx provides a potential Lead Compound.
(b) If Celanese validates that a Lead Compound meets
Celanese's criteria, then it must proceed with its expanded evaluation activity
within six (6) months of such a determination, except as provided in 7.1.1(a) or
in Section 7.2.1 below.
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7.1.2 Lead Compound Evaluation Activity. Celanese commits to
evaluate and develop Lead Compounds that are judged to meet the established
criteria, or for which Celanese sends a Validation Notice, with the same
diligence and discipline as other projects that are active within Celanese's
research centers.
7.2 Lack of Diligence.
7.2.1 Exceptions. Celanese may elect not to develop a particular
Agreement Compound (i.e., may (i) not commence the Lead Compound evaluation
activity with respect to such Agreement Compound, or (ii) drop such Agreement
Compound from the Lead Compound evaluation activity), if:
(a) [******]
(b) [******]
(c) [******]
(d) [******]
(e) [******]
7.2.2 [******]
7.3 Reports. During the term of this Agreement, Celanese shall provide
Symyx with written quarterly reports within thirty (30) days of the end of each
six (6) month period providing at least the following information, (i)
description of the status of the research and development activities conducted
with respect to each Agreement Compound; and (ii) the status of all patent
applications claiming such Agreement Compounds. The reports as described in this
Section shall contain sufficient information to allow Symyx to monitor
Celanese's compliance with this Agreement. Until first commercial introduction
of each royalty-bearing Product, Celanese shall keep Symyx apprised of the
status of the commercial development of all such Products by semi-annually
providing Symyx with a written report detailing such activities with respect to
each such Product during the term of this Agreement. All reports and information
provided under this Section 7.3 shall be deemed Confidential Information of
Celanese.
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the Commission. Confidential treatment has been requested with respect to
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ARTICLE 8
INTELLECTUAL PROPERTY
8.1 Ownership of Inventions.
8.1.1 Research Program. Title to all inventions and other
intellectual property made by employees of Celanese, but not Symyx, in the
course of and in connection with the Research Program ("Celanese Inventions")
shall be deemed owned by Celanese. Title to all inventions and other
intellectual property made solely by employees of Symyx, but not Celanese, in
the course of an in connection with the Research Program ("Symyx Inventions")
shall be deemed owned by Symyx. Title to all inventions and other intellectual
property made jointly by employees of Celanese and Symyx in the course of and in
connection with the Research Program ("Joint Inventions") shall be deemed owned
jointly by Symyx and Celanese.
8.1.2 Law. Inventorship of inventions and other intellectual
property rights conceived and/or reduced to practice pursuant to this Agreement,
and rights of ownership with respect thereto, shall be determined in accordance
with U.S. patent laws.
8.1.3 Reserved Rights. Symyx shall not have any right to
combinatorial technologies developed by Celanese outside the Research Program,
and Celanese shall not have any obligation to disclose the same to Symyx.
Celanese shall not have any right in or to any Symyx Technology or any
intellectual property developed by Symyx outside the Research Program, except as
expressly set forth in this Agreement, and Symyx shall not have any obligation
to disclose the same to Celanese.
8.1.4 CC Technology. Article 10 below contains those terms and
conditions which relate specifically to inventions relating to Combinatorial
Chemistry ("CC") Technology made by the parties during the term of the Research
Program and for one year thereafter.
8.2 Notice of Inventions. Symyx and Celanese shall report to the RFC of
each Active Field any inventions relating to Lead Compounds or Program
Technology made in the conduct of the Research Program.
8.3 Patent Prosecution.
8.3.1 Responsibilities.
(a) Symyx Inventions. Symyx shall have the first right
to be responsible for preparing, filing, prosecuting and maintaining patent
applications and patents relating to Symyx Inventions included within the
Program Technology, and conducting any interferences, re-examinations, reissues
and oppositions relating to such patent applications and patents, as it deems
appropriate, at Symyx's expense; provided, however, that if Symyx elects not to
conduct any or all such activities, then Symyx shall allow Celanese, in its
discretion and at
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its expense, to conduct the activities that Symyx has elected not to conduct, in
which event Celanese shall conduct such activities with patent counsel
reasonably acceptable to Symyx and Celanese.
(b) Joint Inventions.
(i) The parties will cooperate to file,
prosecute and maintain patent applications covering the Joint Invention(s) in
countries agreed by the parties. The parties shall agree which parties shall be
responsible for conducting such activities with respect to a particular Joint
Invention. Subject to Section 8.3.1(b)(ii) below, the parties will share equally
all expenses and fees associated with the filing, prosecution, issuance and
maintenance of any patent application and resulting patent for a Joint Invention
in the agreed countries.
(ii) In the event that either party wishes to
seek patent protection with respect to any Joint Invention in a country the
other is not interested in pursuing patent protection, it shall notify the other
party hereto. The party wishing to seek patent protection with respect to such
Joint Invention in such country or countries, may file, prosecute and maintain
patent applications and patents with respect thereto, at its own expense.
(c) Celanese Inventions. Celanese shall be responsible,
at its expense, for preparing, filing, prosecuting and maintaining worldwide in
such countries it deems appropriate, patent applications and patents relating to
all Celanese Inventions, and conducting any interferences, re-examinations,
reissues and oppositions relating thereto as it deems appropriate.
8.3.2 Symyx Failure to Prosecute. Symyx may elect upon ninety
(90) days prior notice to discontinue prosecution of any patent applications
filed by Symyx pursuant to Section 8.3.1(a) above and/or not to file or conduct
any further activities with respect to the patent applications or patents
subject to such Section. In the event Symyx declines to file or, having filed,
fails to further prosecute or maintain any patent applications or patents
described herein, conduct any proceedings including, but not limited to,
interferences, re-examinations, reissues, oppositions relating thereto, then,
subject to Symyx's agreements with third parties, Celanese shall have the right
to prepare, file, prosecute and maintain such patent applications and patents in
such countries worldwide it deems appropriate, and conduct such proceedings at
its sole expense, and shall consult with Symyx in connection with all such
activities. In such case, Symyx shall immediately execute all necessary
documents that may be required in order to enable Celanese to file, prosecute
and maintain such patent application and to conduct any such proceedings.
8.4 Cooperation. Each of Celanese and Symyx shall keep the other fully
informed as to the status of patent matters described in this Article 8,
including without limitation, by providing the other the opportunity to fully
review and comment on any documents as far in advance as possible of filing
dates and prosecution deadlines, and providing the other copies of
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any substantive documents that such party receives from such patent offices
promptly after receipt, including notice of all official actions, interferences,
reissues, re-examinations, oppositions, potential litigation, or requests for
patent term extensions. Celanese and Symyx shall each reasonably cooperate with
and assist the other at its own expense in connection with such activities, at
the other party's request.
8.5 Copies. Celanese shall promptly provide to Symyx a copy of any
patent applications filed by Celanese and its Affiliates which are Sublicensees
after the publication thereof during the term of this Agreement with respect to
any Program Technology, including without limitation, Agreement compounds. Symyx
shall promptly provide to Celanese a copy of any patent applications filed by
Symyx after the publication thereof during the term of this Agreement relating
to any Program Technology, including without limitation, Agreement Compounds.
8.6 Notice. Symyx shall give Celanese immediate notice of any claim of
patent infringement or trade secret misappropriation it may receive which in any
way relates to this Agreement.
8.7 Enforcement and Defense.
8.7.1 Enforcement. Each party shall promptly notify the other of
its knowledge of any potential infringement of the Program Technology by a third
party.
(a) If such infringement relates to a Product subject to
this Agreement, the parties shall be entitled jointly bring legal action
necessary to enforce patents claiming Symyx Inventions and Joint Inventions
against such infringement, unless Symyx reasonably believes that joint
enforcement with respect to any patent claiming a Symyx Invention could have an
adverse impact on Symyx, in which case Symyx shall have the sole right to bring
legal action to enforce such patent. If the parties agree to jointly bring
action to xxxxx such infringement, the parties shall share the expenses
(including without limitation attorneys' and experts' fees) incurred in
connection with such action, with Symyx paying one-quarter (1/4) of such
expenses and Celanese paying three-quarters (3/4) of such expenses. Any recovery
by the parties in any such action shall be shared as follows: first, each party
shall recover its expenses incurred in such action, and then the remainder shall
be shared by the parties with Celanese receiving three-quarters (3/4) of such
amount and Symyx receiving one-quarter (1/4) of such amount.
(b) If the parties do not agree to jointly take legal
action within six (6) months of the date that they both have knowledge of the
potential infringement, then Symyx shall have the right, but not the obligation,
to independently take such action to xxxxx such infringement. Symyx shall
control and be responsible for all expenses incurred in connection with such
action and may retain all recoveries related to such action.
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(c) If Symyx fails to commence an independent action to
halt a commercially significant infringement within the period described in
Section 8.7.1(b), then Celanese shall have the right, at its expense, to take
such action. In such event, Celanese will have the right to offset one-half of
the reasonable expenses incurred in connection with such action against
royalties due Symyx with respect to a Product which utilizes the infringed
patent in the affected country, up to one-half of such royalties due in any
year. Any recovery by Celanese in such action shall be divided as follows:
first, Celanese shall recover its reasonable expenses incurred in such an
action, second, Celanese shall reimburse Symyx for any royalties for which
Celanese took an offset, and third, Celanese may retain three-quarters (3/4) of
any remainder and shall pay to Symyx one-quarter (1/4) of such remainder.
(d) If there is an infringement which does not relate to
a Product of a patent covering a Joint Invention, the parties shall discuss
whether to jointly bring an action to xxxxx such infringement. In the event that
the parties do not wish to jointly bring such an action either party may seek to
xxxxx such infringement; provided, in such event, should the alleged third party
infringer assert that one or more of the parties to this Agreement are necessary
or indispensable to such proceedings, the other party hereto agrees to join in
and participate in such proceedings, at the expense of and to the extent
requested by the party initially participating in such suit.
8.7.2 Infringement Claims. If the manufacture, sale or use of
any Product pursuant to this Agreement because of the practice of the Program
Technology or the Celanese Technology results in any claim, suit or proceeding
alleging patent infringement against Symyx or Celanese (or its Sublicensees),
such party shall promptly notify the other party hereto in writing setting forth
the facts of such claims in reasonable detail. The defendant shall have the
exclusive right and obligation to defend and control the defense of any such
claim, suit or proceeding, at its own expense, using counsel of its own choice;
provided, however, it shall not enter into any settlement which admits or
concedes that any aspect of the Celanese Technology (in the case of Symyx) and
the Program Technology (in the case of Celanese) is invalid or unenforceable,
without the prior written consent of such other party. The defendant shall keep
the other party hereto reasonably informed of all material developments in
connection with any such claim, suit or proceeding.
ARTICLE 9
CONFIDENTIALITY
9.1 Confidential Information. Except as otherwise expressly provided
herein, the parties agree that, for ten (10) years from receipt of such
Confidential Information, the receiving party shall not, except as expressly
provided in this Article 9, disclose to any third party or use for any purpose
not permitted by Section 9.2 any confidential information furnished to it by the
disclosing party hereto pursuant to this Agreement ("Confidential Information")
except to the extent that it can be established by the receiving party by
competent proof that such information:
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(a) was already known to the receiving party, other than under
an obligation of confidentiality, at the time of disclosure;
(b) was generally available to the public or otherwise part of
the public domain at the time of its disclosure to the receiving party;
(c) became generally available to the public or otherwise part
of the public domain after its disclosure and other than through any act or
omission of the receiving party in breach of this Agreement;
(d) was independently developed by the receiving party as
demonstrated by documented evidence prepared contemporaneously with such
independent development; or
(e) was disclosed to the receiving party, other than under an
obligation of confidentiality, by a third party who had no obligation to the
disclosing party not disclose such information to others.
9.2 Permitted Use and Disclosures. Each party hereto may use or disclose
information disclosed to it by the other party, to the extent such use or
disclosure is reasonably necessary and permitted in the exercise of such rights
granted hereunder in commercializing Products as provided in Article 4, or in
filing or prosecuting patent applications, prosecuting or defending litigation,
complying with applicable governmental regulations or court order or otherwise
submitting information to tax or other governmental authorities, or making a
permitted sublicense or otherwise exercising license rights expressly granted by
the other party pursuant to the terms of this Agreement, provided that if a
party is required to make any such disclosure, other than pursuant to a
confidentiality agreement, it will give reasonable advance notice to the other
party of such disclosure and, save to the extent inappropriate in the case of
patent applications, will use its reasonable best efforts to secure confidential
treatment of such information in consultation with the other party prior to its
disclosure (whether through protective orders or otherwise) and disclose only
the minimum necessary to comply with such requirements.
9.3 Nondisclosure of Terms. Each of the parties hereto agrees not to
disclose the terms of this Agreement to any third party (other than a parent
company or Affiliate which has agreed to be bound by the confidentiality
provisions of this Agreement) without the prior written consent of the other
party hereto, which consent shall not be unreasonably withheld, except to such
party's attorneys, advisors, investors and others on a need to know basis under
circumstances that reasonably ensure the confidentiality thereof, or to the
extent required by law. Notwithstanding the foregoing, the parties shall agree
upon a press release and timing to announce the execution of this Agreement,
together with a corresponding Q&A outline for use in responding to inquiries
about the Agreement, thereafter, Symyx and Celanese may each disclose to third
parties the information contained in such press release and Q&A without the need
for
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further approval by the other. In addition, Celanese and Symyx may make public
statements regarding the progress of the Research Program and the achievement of
milestones with respect thereto, following consultation and mutual agreement,
the consent of neither party not to be unreasonably withheld.
9.4 Publication.
(a) Review; Patentable Inventions and Confidential Information.
Any manuscript by Symyx or Celanese (the "Publishing Party") describing the
scientific results of the Research Program or the manufacturing processes or
conditions related thereto, which are to be published during the term of the
Research Program or within one (1) year after the end of the Research Program
shall be subject to the prior review of the other party (the "Non-Publishing
Party") at least ninety (90) days prior to submission. Further, to avoid loss of
patent rights as a result of premature public disclosure of patentable
information, the Non-Publishing Party shall notify the Publishing Party in
writing within thirty (30) days after receipt of any disclosure whether the
Non-Publishing Party desires to file a patent application on any invention
disclosed in such scientific results. In the event that the Non-Publishing Party
desires to file such a patent application, the Publishing Party shall withhold
publication or disclosure of such scientific results until the earlier of (i) a
patent application is filed thereon, or (ii) the parties determine after
consultation that no patentable invention exists, or (iii) ninety (90) days
after receipt by the publishing party of the Non-Publishing Party's written
notice of the Non-Publishing Party's desire to file such patent application, or
such other period as is reasonable for seeking patent protection. Further, if
such scientific results contain the information of the Non-Publishing Party that
is subject to use and nondisclosure restrictions under this Article 9, the
Publishing Party agrees to remove such information from the proposed publication
or disclosure.
(b) Publication Decision. If the Non-Publishing Party desires to
prevent publication of some or all of the scientific results or the
manufacturing processes or conditions related thereto, which are contained in a
proposed manuscript submitted for review by the Publishing Party pursuant to
Section 9.4(a), the Non-Publishing Party may so notify the Publishing Party (and
representatives of both parties on the Executive Committee) in writing within
fifteen (15) days of receiving the proposed disclosure from the Publishing
Party. If, within forty-five (45) days after the Non-Publishing Party received
the proposed disclosure, the Executive Committee reaches a unanimous decision
regarding publication of such disclosure, then the decision of the Executive
Committee shall control; provided, however, that if the Executive Committee does
not reach unanimous agreement regarding the proposed disclosure within such
forty-five (45) day period, then one party (the "Deciding Party") shall have the
right to decide whether the Publishing Party will have the right to publish the
proposed disclosure (the "Decision") as follows:
(i) the Deciding Party shall promptly, and in any event
within five (5) days after the end of the forty-five (45) day period described
above, give written notice to the other
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party stating its Decision on whether the Publishing Party may publish some or
all (or none) of the scientific results in the proposed disclosure;
(ii) if the Deciding Party does not provide written
notice of its Decision within such five-day period, then the Decision shall be
deemed to be in favor of the other party's most recent proposal;
(iii) if the Deciding Party makes the Decision in its
own favor, then the other party shall have the right to be the Deciding Party
with respect to the next proposed publication upon which the Executive Committee
does not reach agreement;
(iv) if the Deciding Party is the Publishing Party, and
the Deciding Party decides to permit publication of material opposed by the
other party in its most recent proposal, then the Deciding Party shall be deemed
to have made the Decision in its own favor;
(v) if the Deciding Party is the Non-Publishing Party,
and the Deciding Party decides not to permit the publication of some material
the other party proposed to publish in its most recent proposal, then the
Deciding Party shall be deemed to have made the Decision in its own favor;
(vi) Celanese shall be the first Deciding Party; and
(vii) if the Deciding Party is the Publishing Party, the
Decision by the Deciding Party alone shall not operate as a waiver of the
Non-Publishing Party's rights regarding patentable inventions and confidential
information set forth in Section 9.4(a).
It is understood that regardless of the permitted scope of disclosure agreed
upon by the Executive Committee or decided by the Deciding Party, the Publishing
Party shall have no obligation to publish or make the proposed disclosure.
ARTICLE 10
COMBINATORIAL CHEMISTRY TECHNOLOGY
In addition to the other terms and conditions herein, the following
terms and conditions shall apply with respect to Combinatorial Chemistry ("CC")
Technology.
10.1 Celanese Independent CC Technology Projects. During the period that
Celanese is funding the Research Program under this Agreement, Celanese shall
not conduct its own research relating to CC Technology directed to the Active
Fields or the Fields listed on Exhibits D or E hereto. Notwithstanding the
above, during the term of the Research Program Celanese may conduct independent
internal research in CC Technology with up to three (3) internal
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professional scientists and up to two (2) technicians, and may collaborate with
third parties during such period. At no time shall Celanese disclose or transfer
to any Celanese employee involved in an independent internal CC Technology
program or to any third party (including without limitation any Affiliate), any
information relating to CC Technology developed in whole or in part by Symyx or
developed in connection with the Research Program, and Celanese shall take all
necessary and appropriate steps to ensure no such disclosure or transfer occurs.
10.2 Independent CC Technology. No right, ownership interest or license
is granted under this Agreement as to any proprietary CC Technology of either
party existing as of the Effective Date or developed independently of the other
party during the term of this Agreement. Intellectual property shall be deemed
to be independently developed if is conceived, reduced to practice or otherwise
developed solely by individuals without knowledge of the proprietary information
of the other party, provided reasonably the party asserting independent
development shall have the burden of establishing such independent development.
10.3 Research Program CC Technology. Patented inventions, to the extent
they relate to CC Technology conceived or reduced to practice in connection with
the Research Program and during the term thereof and for one (1) year thereafter
(e.g., applies to inventions made by any Celanese employee with access to Symyx
proprietary information), shall be subject to the following:
10.3.1 Celanese Patents.
(a) [******]
(b) [******]
10.3.2 Joint Patents.
(a) [******]
(b) [******]
10.3.3 Symyx Patents. Symyx shall retain all rights to Symyx
patents solely owned by it which claim one or more inventions relating to CC
Technology.
10.3.4 Ownership. The ownership of patents relating to CC
Technology which may have been jointly made shall be jointly determined by the
parties in accordance with U.S. patent law, any dispute as to ownership shall be
settled by arbitration.
ARTICLE 11
REPRESENTATIONS AND WARRANTIES
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11.1 Celanese. Celanese represents and warrants on its own behalf and on
behalf of its Affiliates that: (i) it has the authority and right to enter into
this Agreement and to perform all of Celanese's obligations hereunder; and (ii)
this Agreement is a legal and valid obligation binding upon it and enforceable
in accordance with its terms.
11.2 Symyx. Symyx represents and warrants that: (i) it has the authority
and right to extend the rights granted in this Agreement, (ii) this Agreement is
a legal and valid obligation binding upon it and enforceable in accordance with
its terms; (iii) it has the full right to enter into this Agreement, and to
fully perform its obligations hereunder; (iv) it has not previously granted, and
during the term of this Agreement will not knowingly make any commitment or
grant any rights which are inconsistent in any material way with, the rights and
licenses granted herein; and (v) to the best of its knowledge as of the
Effective Date, there are no existing or threatened actions, suits or claims
pending against it with respect to the Symyx Technology; provided in each case,
however, that the representations and warranties set forth in (i) through (v)
above shall not apply with respect to the CA1 between Symyx and AR&T including,
without limitation, with respect to obligations undertaken, and rights and
licenses granted, thereunder.
11.3 Disclaimer. Celanese and Symyx specifically disclaim any guarantee
that the Research Program will be successful, in whole or in part. The failure
of the parties to successfully develop Agreement Compounds or Products will not
constitute a breach of any representation or warranty or other obligation under
this Agreement. EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, SYMYX
AND CELANESE AND THEIR RESPECTIVE AFFILIATES MAKE NO REPRESENTATIONS AND EXTEND
NO WARRANTIES OR CONDITIONS OF ANY KIND, EITHER EXPRESS OR IMPLIED, WITH RESPECT
TO THE PROGRAM TECHNOLOGY, SYMYX TECHNOLOGY, CELANESE TECHNOLOGY, LIBRARIES,
AGREEMENT COMPOUNDS, INFORMATION DISCLOSED HEREUNDER OR AGREEMENT PRODUCTS
INCLUDING, BUT NOT LIMITED TO, WARRANTIES OF MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE, VALIDITY OF ANY PROGRAM TECHNOLOGY, SYMYX TECHNOLOGY OR
CELANESE TECHNOLOGY, PATENTED OR UNPATENTED, OR NONINFRINGEMENT OF THE
INTELLECTUAL PROPERTY RIGHTS OF THIRD PARTIES.
ARTICLE 12
INDEMNIFICATION
12.1 Celanese. Celanese agrees to indemnify, defend and hold Symyx and
its Affiliates and their directors, officers, employees, agents and their
respective successors, heirs and assigns (the "Symyx Indemnitees") harmless from
and against any losses, costs, claims, damages, liabilities or expense
(including reasonable attorneys' and professional fees and other expenses of
litigation) (collectively, "Liabilities") arising, directly or indirectly out of
or in connection with third party claims, suits, actions, demands or judgments,
including without
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limitation, personal injury, product liability, patent infringement and trade
secret misappropriation matters, suits, actions or demands relating to (i) any
Agreement Compounds or Products developed, manufactured, used, sold or otherwise
distributed by or on behalf of Celanese, its Affiliates, Sublicensees or other
designees (including, without limitation, product liability and patent
infringement claims), (ii) Celanese's performance of the Research Program, (iii)
any inconsistency or dispute regarding the allocation of rights and licenses
under this Agreement and/or the CA1 between Celanese and AR&T (or the successors
or assigns of either of them), and (iv) any breach by Celanese of the
representations and warranties made in this Agreement, except, in each case, to
the extent such Liabilities result from a material breach of this Agreement by
Symyx, or the gross negligence or intentional misconduct of Symyx.
12.2 Symyx. Symyx agrees to indemnify, defend and hold Celanese, its
Affiliates and Sublicensees and their respective directors, officers, employees,
agents and their respective heirs and assigns (the "Celanese Indemnitees")
harmless from and against any losses, costs, claims, damages, liabilities or
expense (including reasonable attorneys' and professional fees and other
expenses of litigation) (collectively, "Liabilities") arising, directly or
indirectly out of or in connection with third party claims, suits, actions,
demands or judgments, including without limitation personal injury and product
liability matters, suits, actions, demands relating to (i) any Product
developed, manufactured, used, sold or otherwise distributed by or on behalf of
Symyx, its Affiliates, licensees (other than by Celanese or its Affiliates,
Sublicensees or other designees) or other designees (including, without
limitation, product liability and patent infringement claims), and (ii) any
breach by Symyx of its representations and warranties made in this Agreement,
except, in each case, to the extent such Liabilities result from a material
breach of this Agreement by Celanese, or the gross negligence or intentional
misconduct of Celanese.
12.3 Procedure. In the event that any Indemnitee (either a Celanese
Indemnitee or a Symyx Indemnitee) intends to claim indemnification under this
Article 12 it shall promptly notify the other party in writing of such alleged
Liability. The indemnifying party shall have the right to control the defense
thereof with counsel of its choice as long as such counsel is reasonably
acceptable to Indemnitee; provided, however, that any Indemnitee shall have the
right to retain its own counsel at its own expense, for any reason, including if
representation of any Indemnitee by the counsel retained by the indemnifying
party would be inappropriate due to actual or potential differing interests
between such Indemnitee and any other party reasonably represented by such
counsel in such proceeding. The affected Indemnitee shall cooperate with the
indemnifying party and its legal representatives in the investigation of any
action, claim or liability covered by this Article 12. The Indemnitee shall not,
except at its own cost, voluntarily make any payment to incur any expense with
respect to any claim or suit without the prior written consent of the
indemnifying party, which such party shall not be required to give.
ARTICLE 13
TERM AND TERMINATION
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13.1 Term.
13.1.1 Research Program. The Research Program commenced under
the terms of the CA1 on or about February 1, 1997, and, unless earlier
terminated pursuant to the terms of this Article 13, shall continue until
[******] and for any extension of the Research Program pursuant to this Section
13.1.1. Celanese shall have the right to extend the Research Program (at the
funding and FTE levels set forth in the Agreement) [******]
13.1.2 Agreement. The term of this Agreement shall commence on
the Effective Date, and shall continue in full force and effect until Celanese
and its Affiliates and Sublicensees have no remaining royalty payment
obligations, unless terminated earlier as provided in this Article 13.
13.2 Termination for Breach. Either party to this Agreement may
terminate this Agreement as to any other party hereto in the event such other
party shall have materially breached or defaulted in the performance of any of
its material obligations hereunder, and such default shall have continued for
sixty (60) days after written notice thereof was provided to the breaching party
by the non-breaching party. Any termination shall become effective at the end of
such sixty (60) day period unless the breaching party (or any other party on its
behalf) has cured any such breach or default prior to the expiration of the
sixty (60) day period; provided, however, in the case of a failure to pay any
amount due hereunder, such default may be the basis of termination fifteen (15)
business days following the date that notice of such default was provided to the
breaching party. A good faith dispute as to the amount of or liability for
royalties or other amounts claimed due by the other party (excluding the
payments set forth in Section 5.1) shall not constitute a breach giving rise to
the right of termination set forth in this Section 13.2 if: (i) any
non-contested amount is paid promptly when due, (ii) all contested amounts are
placed in escrow during the pendancy of the dispute, and (iii) full payment, if
any is due, plus reasonable expenses and legal fees expended for the purpose of
collecting such amounts, is made promptly upon resolution of the dispute. If
arbitration is required to resolve the dispute over whether the contested
amounts are due, the arbitrator shall also make a determination of whether the
disputed payments were withheld in good faith and whether the withholding of
payment was frivolous. If the arbitrator determines that the withholding of
payment was not in good faith or frivolous, or both, the party claiming the
payment shall have the right to terminate this Agreement for breach effective
immediately upon written notice to the other party.
13.3 Termination for Insolvency. If voluntary or involuntary proceedings
by or against a party are instituted in bankruptcy under any insolvency law, or
a receiver or custodian is appointed for such party, or proceedings are
instituted by or against such party for corporate reorganization, dissolution,
liquidation or winding-up of such party, which proceedings, if involuntary,
shall not have been dismissed within sixty (60) days after the date of filing,
or if such party makes an assignment for the benefit of creditors, or
substantially all of the assets of such party are seized or attached and not
released within sixty (60) days thereafter, the other party may immediately
terminate this Agreement effective upon notice of such termination.
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13.4 Effect of Breach or Termination.
13.4.1 Accrued Rights and Obligations. Termination of this
Agreement for any reason shall not release either party hereto from any
liability or obligation which, at the time of such termination, has already
accrued to the other party or which is attributable to a period prior to such
termination nor preclude either party from pursuing any rights and remedies it
may have hereunder or at law or in equity with respect to any breach of these
Agreement.
13.4.2 Return of Materials. Upon any termination of this
Agreement, Celanese and Symyx shall promptly return to the other all
Confidential Information including, without limitation, all Know-How received
from the other party (except one copy of which may be retained for archival
purposes and ensuring compliance with the provisions of Article 9).
13.4.3 Post-Termination Product Sales In the event of the
cancellation or termination of any license rights with respect to a Product
prior to the expiration of this Agreement, inventory of the Product may be sold
for up to six (6) months after date of termination, provided royalties are paid
thereon.
13.4.4 Licenses.
(a) The licenses and rights granted Celanese herein
shall terminate in the event of a termination by Symyx pursuant to Section 13.2
or 13.3, and the licenses granted to Symyx in Sections 4.5 and 10.3 shall
terminate in the event of a termination by Celanese pursuant to Sections 13.2 or
13.3.
(b) If Celanese's rights terminate with respect to a
particular Agreement compound and/or Product pursuant to the terms of Section
7.2.2, for failure to meet the diligence requirements of Section 7.1, and more
than one Product is being commercially developed or exploited by Celanese or its
Sublicensees hereunder, then Symyx shall be entitled to terminate this Agreement
only with respect to the applicable Agreement Compounds and Products.
13.5 Survival. Except as set forth above, Sections 2.2.3(b), 2.5, 2.6,
2.7, 4.5, 4.6, 4.9, 5.2, 13.4 and 13.5 of this Agreement, and Articles 6, 8, 9,
10, 11 and 14 shall survive the expiration or termination of this Agreement for
any reason.
ARTICLE 14
MISCELLANEOUS
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14.1 Governing Laws. This Agreement and any dispute arising from the
construction, performance or breach hereof shall be governed by and construed
and enforced in accordance with, the laws of the state of California, without
reference to conflicts of laws principles.
14.2 No Implied Licenses. Only the licenses granted pursuant to the
express terms of this Agreement shall be of any legal force or effect. No other
license rights shall be created by implication, estoppel or otherwise.
14.3 Waiver. It is agreed that no waiver by either party hereto of any
breach or default of any of the covenants or agreements herein set forth shall
be deemed a waiver as to any subsequent and/or similar breach or default.
14.4 Assignment. This Agreement shall not be assignable by either party
to any third party hereto without the written consent of the other party hereto,
except either party may assign this Agreement, without such consent, to an
entity that acquires all or substantially all of the business or assets of such
party to which this Agreement pertains, whether by merger, reorganization,
acquisition, sale, or otherwise. This Agreement shall be binding upon and accrue
to the benefit any permitted assignee, and any such assignee shall agree to
perform the obligation of the assignor.
14.5 Independent Contractors. The relationship of the parties hereto is
that of independent contractors. The parties hereto are not deemed to be agents,
partners or joint ventures of the others for any purpose as a result of this
Agreement or the transactions contemplated thereby.
14.6 Compliance with Laws. In exercising their rights under this
Agreement, the parties shall fully comply in all material respects with the
requirements of any and all applicable laws, regulations, rules and orders of
any governmental body having jurisdiction over the exercise of rights under this
Agreement including, without limitation, those applicable to the discovery,
development, manufacture, distribution, import and export and sale of Products
pursuant to this Agreement.
14.7 Patent Marking. Celanese agrees to xxxx and have its Sublicensees
xxxx all Agreement compounds sold pursuant to this Agreement in accordance with
the applicable statute or regulations relating to patent marking in the country
or countries of manufacture and sale thereof.
14.8 Notices. All notices, requests and other communications hereunder
shall be in writing and shall be personally delivered or by registered or
certified mail, return receipt requested, postage prepaid, in each case to the
respective address specified below, or such other address as may be specified in
writing to the other parties hereto and shall be deemed to have been given upon
receipt.
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Symyx: Symyx Technologies, Inc.
000 Xxxxxxx Xxxxxxx
Xxxxxxxxx, Xxxxxxxxxx 00000
Attn: President
with a copy to: Xxxxxx Xxxxxxx Xxxxxxxx & Xxxxxx
Professional Corporation
000 Xxxx Xxxx Xxxx
Xxxx Xxxx, Xxxxxxxxxx 00000-0000
Attn: Xxxxxxx X. Xxxxxx
Celanese: Celanese Ltd.
0000 Xxxx XXX Xxxxxxx
Xxxxxx, Xxxxx 00000
Attn: Chief Technology Officer
with a copy to: Celanese Ltd.
Corpus Christi Technical Center
0000 Xxxxxxxxx
Xxxxxx Xxxxxxx, Xxxxx 00000
Attn: Patent Counsel
14.9 Severability. In the event that any provision of this Agreement
becomes or is declared by a court of competent jurisdiction to be illegal,
unenforceable or void, this Agreement shall continue in full force and effect to
the fullest extent permitted by law without said provision, and the parties
shall amend the Agreement to the extent feasible to lawfully include the
substance of the excluded term to as fully as possible realize the intent of the
parties and their commercial bargain.
14.10 Force Majeure. Neither party shall lose any rights hereunder or be
liable to the other party for damages or losses (except for payment obligations)
on account of failure of performance by the defaulting party if the failure is
occasioned by war, strike, fire, Act of God, earthquake, flood, lockout,
embargo, governmental acts or orders or restrictions, failure of suppliers, or
any other reason where failure to perform is beyond the reasonable control and
not caused by the negligence, intentional conduct or misconduct of the
non-performing party and such party has exerted all reasonable efforts to avoid
or remedy such force majeure; provided, however, that in no event shall a party
be required to settle any labor dispute or disturbance.
14.11 Complete Agreement. This Agreement with its Exhibits, constitutes
the entire agreement, both written and oral, between the parties with respect to
the subject matter hereof, and all prior agreements respecting the subject
matter hereof, either written or oral, express or implied, shall be abrogated,
canceled, and are null and void and of no effect. No amendment or
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change hereof or addition hereto shall be effective or binding on either of the
parties hereto unless reduced to writing and executed by the respective duly
authorized representatives of Symyx and Celanese.
14.12 Dispute Resolution. Any dispute under this Agreement which is not
settled by mutual consent shall be finally settled by binding arbitration,
conducted in accordance with the Commercial Arbitration Rules of the American
Arbitration Association by three (3) neutral arbitrators appointed in accordance
with said rules, unless the parties agree to conduct such arbitration with a
single arbitrator. The arbitration shall be held in San Francisco, California,
and the arbitrators shall be independent experts with a background suitable for
the matters in dispute. The arbitrators shall determine what discovery will be
permitted, consistent with the goal of limiting the cost and time which the
parties must expend for discovery; provided the arbitrators shall permit such
discovery as they deem necessary to permit an equitable resolution of the
dispute. Any written evidence originally in a language other than English shall
be submitted in English translation accompanied by the original and a true copy
thereof. The costs of arbitration, including administrative and arbitrators'
fees, shall be shared equally by the parties. Each party shall bear its own
costs and attorneys' and witness fees. A disputed performance or suspended
performances pending the resolution of the arbitration must be completed within
thirty (30) days following the final decision of the arbitrators or such other
reasonable period as the arbitrators determine in a written opinion. Any
arbitration subject to this Section 14.12 shall be completed within one (1) year
from the filing of notice of a request for such arbitration. The award shall be
final and binding upon the parties hereto.
14.13 Export Control Regulations. The rights and obligations of the
parties under this Agreement, shall be subject in all respects to United States
laws and regulations as shall from time to time govern the license and delivery
of technology and products abroad, including the United States Foreign Assets
Control Regulations, Transaction Control Regulations and Export Control
Regulations, as amended, and any successor legislation issued by the Department
of Commerce, International Trade Administration, or Office of Export Licensing.
Without in any way limiting the provisions of this Agreement, Celanese agrees
that, unless prior authorization is obtained from the Office of Export
Licensing, it shall not export, re-export, or transship, directly or indirectly,
to any country, any of the technical data disclosed to Celanese by Symyx if such
export would violate the laws of the United States or the regulations of any
department or agency of the United States Government.
14.14 Headings. The captions to the several Sections hereof are not part
of this Agreement, but are included merely for convenience of reference and
shall not affect its meaning or interpretation.
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14.15 Counterparts. This Agreement may be executed in counterparts, each
of which shall be deemed to be an original and all of which together shall be
deemed to be one and the same agreement.
14.16 Affiliates. Symyx understands that Celanese conducts its business
activities in cooperation with various Celanese Affiliates around the world. In
fulfilling the obligations of Celanese under this Agreement, including, but not
limited to, its obligations under Article 7, any activities to be performed by
Celanese may be performed by such Affiliates; provided, that such performance
shall not be deemed an assignment of this Agreement and Celanese shall remain
obligated to Symyx pursuant to the terms of this Agreement. Further, to the
extent that work performed pursuant to this Agreement by a Celanese Affiliate
results in the creation of intellectual property to which Symyx would have
certain rights had such intellectual property been created by Celanese, Celanese
shall insure that Symyx rights are not restricted as a result of such work
having been performed by such an Affiliate. In addition, any rights or licenses
granted to Celanese by Symyx pursuant to this Agreement, including, but not
limited to, the licenses granted in Article 4, may be freely and unrestrictedly
sublicensed by Celanese to Celanese Affiliates subject to the terms of this
Agreement.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed by their authorized representatives and delivered in duplicate
originals as of the Effective Date.
CELANESE LTD. SYMYX TECHNOLOGIES, INC.
DALLAS, TEXAS SUNNYVALE, CALIFORNIA
By: /s/ XXXXX XXXXXX By: /s/ XXX XXXXXXXXXX
-------------------------------- ------------------------------
Title: VP Title: President and CEO
-------------------------------- ------------------------------
Date: 7-28-98 Date: 8-31-98
-------------------------------- ------------------------------
CELANESE LTD. CELANESE LTD.
DALLAS, TEXAS DALLAS, TEXAS
By: /s/ XXXXX X. XXXXXXX By: /s/ XXXX XXXX
-------------------------------- ------------------------------
Title: CTO Title: VP
-------------------------------- ------------------------------
Date: 7-21-98 Date: 7-28-98
-------------------------------- ------------------------------
Exhibit A: Definitions
Exhibit B: Procedure for Lead Compound Identification (2.4.1)
Exhibit C: Procedures regarding Inactive Projects (2.4.2)
Exhibit D: Inactive Fields (2.3.1)
Exhibit E: Preferred Fields (2.3.2)
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EXHIBIT A
DEFINITIONS
1.1 "Affiliate" shall mean any corporation or other business entity
which during the term of this Agreement controls, is controlled by or is under
common control with Symyx or Celanese or its parent entities, but only for so
long as such entity controls, is controlled by, or is under common control with
Symyx or Celanese. For this purpose, control means the possession of the power
to direct or cause the direction of the management and the policies of an entity
whether through ownership directly or indirectly of fifty percent (50%) or more
of the stock entitled to vote, and for nonstock organizations, the right to
receive over fifty percent (50%) of the profits by contract or otherwise, or if
not meeting the preceding requirement, any company owned or controlled by or
owning or controlling Symyx or Celanese at the maximum control or ownership
right permitted in the country where such company exists.
1.2 "Agreement Compound" shall mean any Lead Compound [******]
1.3 [******]
1.4 "Commodity Chemical" shall mean [******]
1.4 "Confidential Information" shall mean (i) any proprietary or
confidential information or material in tangible form disclosed hereunder that
is marked as "Confidential" at the time it is delivered to the receiving party,
or (ii) proprietary or confidential information disclosed orally hereunder which
is identified as confidential or proprietary when disclosed and such disclosure
of confidential information is confirmed in writing within thirty (30) days by
the disclosing party.
1.5 "Celanese Technology" shall mean any patent application or patent
owned or controlled by Celanese during the term of this Agreement which relates
to an invention conceived and reduced to practice outside the Research Program
by Celanese or its Sublicensees, and which claims (i) an Agreement Compound or a
Product, or (ii) a method or process for the synthesis of an Agreement Compound
or a Product, or (iii) a composition-of-matter containing an Agreement Compound
or a Product, or (iv) a method or process of use of an Agreement Compound in or
for the manufacture of a Product.
1.6 "Derivative Compound" shall mean [******]
(a) [******]
(b) [******]
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the omitted portions.
33
1.7 "Field" shall mean a defined area of research within the Research
Program focused on the development of Agreement Compounds for the production of
one or more Products which meet an agreed Product Group Definition. Fields
include Active Fields and Inactive Fields.
1.7.1 "Active Field" means a Field for which there is at least
one on-going Active Project.
1.7.2 "Inactive Field" means a Field listed on Exhibit D or
Exhibit E hereto for which there is no on-going Active Project.
1.8 "Field Minimum Funding" shall mean the minimum level of annual
funding support from Celanese for a particular Active Field, as provided in
Section 5.1.1 or as may otherwise be established by the EC.
1.9 "Field Minimum Term" shall mean with respect to any Active Field,
the minimum time required to conduct a comprehensive evaluation of the utility
of combinatorial technologies within such Active Field, as established by the
EC.
1.10 "Lead Compound" shall mean a Library Compound which meets the
specific [******] properties established by the RFC in the applicable Project
Plan for identifying a Lead Compound. The procedure for identifying a Lead
Compound is set forth on Exhibit B hereto.
1.11 "Library Compound" shall mean any compound or mixture or
composition of matter which is or was contained in a library prepared by or on
behalf of Symyx.
1.12 "Manufacturing Costs" shall mean (i) all direct and indirect costs
related to the manufacture by Celanese or its Affiliates of Products, including
costs for personnel, materials, quality control, regulatory compliance,
administrative expenses, subcontractors, fixed and variable manufacturing
overhead costs and business unit or division costs reasonably allocable to the
manufacture of Products, as determined and allocated in accordance with
generally accepted accounting principles, consistently applied, excluding costs
for excess manufacturing capacity not reasonably related to projected demand for
Products, or (ii) with respect to Products purchased from a third party vendor,
reasonable amounts actually paid to the vendor for such Products in arm's length
transactions.
1.13 "Net Income" shall mean the pro forma after tax income (calculated
using the normal and customary tax rate used by Celanese in its internal
calculations) attributable to royalties, license and other fees, and Net Sales
with respect to a Product, less: (a) Manufacturing Costs for such Product; and
(b) reasonable expenses incurred by Celanese in connection with the marketing,
shipping or sale of the Product, and general and administrative expenses
relating thereto, all as determined and allocated in accordance with generally
accepted accounting principles, consistently applied.
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the Commission. Confidential treatment has been requested with respect to
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34
1.14 "Net Sales" shall mean the invoice price of any Product sold by
Celanese or its Affiliates to bona fide independent third parties, less, to the
extent included in such invoice price the total of: (1) ordinary and customary
trade discounts actually allowed; (2) credits, rebates and returns; (3) freight
and duties paid for and separately identified on the invoice or other
documentation maintained in the ordinary course of business, and (4) excise
taxes, other consumption taxes, customs duties and other compulsory payments to
governmental authorities actually paid and separately identified on the invoice
or of the documentation maintained in the ordinary course of business. Net Sales
shall also include the amount of fair market value of all other consideration
received by Celanese or its Affiliates in respect of Products, whether such
consideration is in cash, payment in kind, exchange or another form.
1.12 "Product" shall mean any product which (i) incorporates an
Agreement Compound, or (ii) utilizes an Agreement Compound in its manufacture,
or (iii) is made utilizing a patentable method or patentable process within the
Program Technology as to which Symyx has an interest. By way of illustration,
without limitation, examples of Products within the Celanese Group could include
acrylic acid made by the selective oxidation of propane, or acetic acid made by
the selective oxidation of ethane and/or ethylene.
1.13 "Product Group Definition" shall mean the definition established at
the commencement of research in an Active Field which defines the Product(s)
which are the focus of a particular Active Field. [******]
1.13.1 [******]
1.14 "Program Minimum Funding" shall mean the minimum level of annual
funding support from Celanese for maintaining Program exclusivity, as provided
in Section 5.1.1(d) or as may otherwise be established by the EC.
1.15 "Program Technology" shall mean any Patent Right and Know-How
conceived, reduced to practice, or otherwise developed by Symyx or Celanese, or
jointly by the parties in connection with the conduct of the Research Program.
[PROGRAM TECHNOLOGY SHALL ALSO INCLUDE PATENT RIGHTS AND KNOW-HOW CONCEIVED,
REDUCED TO PRACTICE, OR OTHERWISE DEVELOPED BY SYMYX OR AR&T, OR JOINTLY BY
SYMYX AND AR&T, IN CONDUCTING OF THE AR&T RESEARCH PROGRAM PRIOR TO THE
EFFECTIVE DATE OF THIS AGREEMENT.] Program Technology shall not include any
Symyx Technology, Celanese Technology or CC Technology.
1.15.1 "Know-How" shall mean all data, instructions, processes,
formulas and information, including, without limitation, chemical, physical and
analytical, safety, manufacturing and quality control data and information which
is necessary for the development, manufacture or use of Agreement Compounds or
Products. Know-How does not include any inventions included in the Patent
Rights.
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35
1.15.2 "Patent Rights" shall mean (i) any patent or patent
application which claims an Agreement Compound or a Product, or method or
process for the synthesis of an Agreement Compound or Product, or a
composition-of-matter containing an Agreement Compound or product, or a method
or process for the use of an Agreement Compound in or for the manufacture of a
Product, and (ii) any divisions, continuations, continuations-in-part, reissues,
reexaminations, extensions or other governmental actions which extend any of the
subject matter of the patent applications or patents in (i) above, and any
substitutions, confirmations, registrations or revalidations of any of the
foregoing.
1.16 "Project" shall mean a research effort within a Field focused on
the discovery of Lead Compounds for the manufacture of Product(s) within a
specific Product Group Definition. Projects are categorized as follows:
1.16.1 "Active Project" means a Project for which Celanese is
paying Research Expenses pursuant to Section 5.1.
1.16.2 "Inactive Project" means a Project for which Celanese is
not paying any Research Expenses.
1.17 "Research Expense" shall have the meaning set forth in Section
5.1.1(d).
1.18 Research Program.
1.18.1 "Research Program" shall mean the research activities
conducted by Symyx under this Agreement for Celanese, or by Symyx and Celanese
on a collaborative basis under this Agreement, with the goal of discovering
Agreement Compounds. It is understood that the Research Program and Active
Projects shall include activities undertaken by Celanese with respect to initial
evaluation of a given compound, including without limitation activities subject
to Section 7.1.1, but shall not include any activities conducted by Celanese in
manufacturing scale-up or commercial manufacturing, or in evaluating or
developing a given Lead Compound after Celanese has sent the Validation Notice
described in Section 7.1.1 for such Lead Compound. [THE RESEARCH PROGRAM SHALL
ALSO INCLUDE THE AR&T RESEARCH PROGRAM.]
1.18.2 ["AR&T RESEARCH PROGRAM" SHALL MEAN RESEARCH ACTIVITIES
CONDUCTED PRIOR TO THE EFFECTIVE DATE OF THIS AGREEMENT BY SYMYX FOR AR&T OR BY
SYMYX AND AR&T ON A COLLABORATIVE BASIS UNDER CA1 WITH RESPECT TO THE FIELD OF
THIS AGREEMENT.]
1.19 "Specialty Chemical" shall mean chemicals and materials which are
not Commodity Chemicals.
1.19 "Sublicensee" shall mean, with respect to a particular Product, a
third party to whom Celanese has granted a license or sublicense to develop,
make, import, use, offer for sale or sell such Product. As used in this
Agreement, Sublicensee shall also include a third party to
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whom Celanese has granted the right to distribute such Product, provided that
such third party has the primary responsibility for marketing and promotion at
its expense of such Product within the field or territory for which such
distribution rights are granted.
1.20 "Symyx Technology" shall mean all patents, copyrights, trade
secrets, knowhow, data, and other intellectual property of any kind owned or
controlled by Symyx during the term of this Agreement which relates to an
invention conceived and reduced to practice outside the Research Program by
Symyx, and which claims an Agreement Compound or a Product, or a method or
process for the synthesis an Agreement Compound or a Product, or a
composition-of-matter containing an Agreement Compound or a Product, or a method
or process of use of an Agreement Compound in or for the manufacture of a
Product.
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EXHIBIT B
PROCEDURE FOR
LEAD COMPOUND IDENTIFICATION
1. At such time as Symyx has identified a Library Compound which it
believes may meet the Lead Criteria for a particular Active Project it shall
provide the data and results supporting such conclusion to the applicable RFC.
2. Following the identification of any potential Lead Compound, at
Celanese's request, Symyx shall prepare and deliver to Celanese gram quantities
of such potential Lead Compound, which Celanese shall use in confirming whether
such potential Lead Compound meets the applicable lead criteria. Symyx will use
commercially reasonable efforts to provide quantities in such amounts as the RFC
may determine is reasonably required by Celanese for testing, and will notify
Celanese if it is not commercially reasonable to provide such quantities to
Celanese, in which case the parties agree to meet and discuss how to proceed
with respect to such Lead Compound.
3. The RFC for a particular Active Field shall review the results
provided by Celanese with respect to a potential Lead Compound, and if such
results indicate that the applicable lead criteria have been satisfied, the RFC
shall deem such Library Compound to be a potential Lead Compound for all
purposes of this Agreement.
4. In the event that the RFC requests further information or the conduct
of further studies to confirm whether a potential Lead Compound meets the
applicable lead criteria, Symyx and Celanese shall prepare any such information
and conduct any such studies.
38
EXHIBIT C
PROCEDURES REGARDING ACTIVATION OF
INACTIVE PROJECTS
1. Inactive Projects. The RFC for each Active Field shall at the request
of either party consider any proposed Inactive Projects which a party believes
would be fruitful to pursue in connection with the Active Field, and at least
quarterly prepare an updated prioritized list of such Inactive Projects.
2. Activation of Inactive Projects. At any time while Celanese is paying
Research Expenses for a particular Active Field equal to or greater than the
Field Minimum Funding for such Active Field, the RFC for a particular Active
Field may agree to recommend to the EC that an Inactive Project within such
Active Field be activated to become an Active Project. In such event, the
parties shall exchange technical information relevant to the proposed Inactive
Project including the feasibility of such Inactive Project and the likelihood of
identifying a Lead Compound in connection therewith. Within ninety (90) days of
the initial notice, the EC shall determine whether to activate such Inactive
Project. If approved by the EC, the RFC shall (i) prepare a Project plan, (ii)
establish the Product Group Definition for such Active Project, and (iii)
establish the physical, chemical and/or catalytic criteria for identification of
a Lead Compound. Activation of an Inactive Project shall become effective upon
completion of all of the foregoing.
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EXHIBIT D
INACTIVE FIELDS
EXCLUSIVE LIST
[******]
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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EXHIBIT E
INACTIVE FIELDS
RIGHT OF NEGOTIATION LIST
[******]
* Certain information on this page has been omitted and filed separately with
the Commission. Confidential treatment has been requested with respect to
the omitted portions.
