COMMERCIAL LICENSE AGREEMENT
Exhibit 10.33
*** Text Omitted and Filed Separately
Confidential Treatment Requested
Under 17 C.F.R. §§ 200.80(b)(4)
and 203.406
This Commercial License Agreement (“Commercial License”), effective the 15th day of April, 2010 (“Effective Date”), is made by and between Xxxxxxx, Inc., through its Bio Technology Development Center, having its principal place of business at 00000 XxXxxxx Xxxx Xxxx, Xxxxxxx, XX 00000 (hereinafter “Cargill”), and Bioamber S.A.S., having a place of business at Xxxxx xx Xxxxxxxxxx, X-00000, Xxxxxxx Xxxxxx (“Bioamber”). Cargill and Bioamber are referred to herein as “Parties”, in singular or plural usage, as required by context.
WHEREAS, Cargill has developed a yeast strain designated CB1 for fermenting glucose and/or sucrose, and/or mixed sugar streams and related research tools for modifying CB1, which are protected by Licensed Patents (as defined in Section 1.3 below);
WHEREAS, Bioamber has engaged Cargill under the Development Agreement, to which this Commercial License is an Exhibit, to further develop or modify CB1 with the goal of fermenting glucose and/or sucrose, and/or mixed sugar streams to produce succinic acid and salts thereof;
WHEREAS, the Parties also desire to enter into this Commercial License concurrently with the Development Agreement for the purpose of Cargill granting and Bioamber acquiring certain rights to commercialize the CB1 strain, Improvements made under the Development Agreement, and related patent rights for the production of succinic acid and salts thereof as specified in this Commercial License under its terms and conditions;
NOW, THEREFORE, in consideration of the mutual covenants set forth herein, the Parties agree as follows:
1. DEFINITIONS
1.1 “CB1 Strain” shall mean Modified CB1 as defined in the Development Agreement between the Parties.
1.2 “Confidential Information” shall mean all information related to this Commercial License in any form disclosed in any manner by or on behalf of one Party to the other Party during the term of this Commercial License. Without limitation, Confidential Information shall include information about products, raw materials, samples, packaging, manufacturing processes, financial information, research information, tools, business plans, customer lists and supplier lists.
1.3 “Licensed Patents” shall mean those patents and patent applications defined in Section 2.5 of the Development Agreement and in Exhibit B thereto provided that those patents and patent applications listed in Exhibit B under the heading of “Needed only if Bioamber takes the cellulosics option” are only to be included within the term “Licensed Patents” in the event that Bioamber exercises its option under Section 3 of the Development Agreement.
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1.4 “Know-How” shall mean information developed by Cargill during the Development Agreement and this Commercial License concerning the use of CB1 Strain for the production of Product. Information relating to the Licensed Tool Kit (as defined in the Development Agreement) and the Licensed Tool Kit itself used to genetically modify CB1 Strain shall not be included within Know-How.
1.5 “Product” shall mean succinic acid and salts thereof produced by use of CB1 Strain to ferment glucose and/or sucrose, and, in the event that Bioamber exercises its option under Section 3 of the Development Agreement, “Product” shall also mean succinic acid and salts thereof produced by use of CB1 Strain to ferment cellulosic feedstock.
1.6 “Improvements” shall mean those inventions or discoveries that are defined in Section 5.2 of the Development Agreement, including “Bioamber Improvements”, “Cargill Improvements”, and “Joint Improvements” as those terms are defined in Section 5.2 of the Development Agreement and used in this Commercial License.
1.7 “Net Sale(s)” shall mean the gross sale or transfer quantity of Succinic Acid Equivalent measured in US pounds that is made by Bioamber and its sublicensees and sold or otherwise transferred to any third party or to Bioamber itself less allowed Product returns and reasonable Product allowances given by Bioamber and its sublicensees, all as determined by Bioamber’s standard accounting practices. For purposes of clarity, Product allowances shall not include discounts given to customers in the form of Product credits.
1.8 “Quarter” shall mean a three month time period from January 1 to March 31, April 1 to June 30, July 1 to September 30, or October 1 to December 31 in any year during the term of this Commercial License.
1.9 “Succinic Acid Equivalent” means the ratio of the molecular weight of succinic acid to molecular weight of Product multiplied by the dry weight mass of the Product produced. As an example, in the case were the Product is diammonium succinate (DAS), the Succinic Acid (SA) Equivalent would be calculated as follows: 1 pound DAS x (118/152) = 0.7763 pound of SA, where 118 is the molecular weight of succinic acid and 152 is the molecular weight of diammonium succinate.
1.10 “Affiliates” shall mean any person or entity that directly or indirectly controls, is controlled by, or is under common control with such person or entity, and is identified in writing and included in Exhibit X, which may be updated periodically as mutually agreed by the Parties. For purposes of the preceding sentence, “control” means the right to control, or actual control of, the management of such other entity, whether by ownership of securities, by voting rights, by agreement or otherwise. Neither Party’s Affiliates are included under the rights and obligations of the provisions of this Commercial License unless done so by an explicit reference.
1.11 As used throughout this Commercial License, (i) “sublicense” shall mean any agreement between Bioamber and a third party (including Affiliates) granting the third party commercial rights under or to any CB1 Strain, Licensed Patents, Know-How and/or Improvements, and (ii) “sublicensee” shall mean any such third party entering into such sublicense with Bioamber.
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2. CB1 STRAIN DEVELOPMENT AND REGULATORY APPROVAL
2.1 The Parties will attempt to develop CB1 Strain under the terms of the Development Agreement for the purpose of the commercialization of the Product.
2.2 Bioamber agrees to use its best efforts to obtain the regulatory approvals necessary to make and sell, or otherwise transfer, Products throughout the world.
3. CONFIDENTIAL INFORMATION,AND TRANSFER AND USE OF STRAINS
3.1 Both Parties agree that Confidential Information under this Commercial License is subject to the terms and conditions governing “Confidential Information” under Section 4 of the Development Agreement, including the exclusions therein. Notwithstanding the foregoing, Bioamber shall be permitted to disclose Confidential Information to its shareholders (DNP Green Technology, Inc. and Agro-Industrie Recherches & Développements, S.A.) and to its sublicensees or potential sublicensees who are bound by an executed confidentiality agreement with terms equivalent to those in the Development Agreement, subject to the requirements for biological materials specified in Section 3.2 below.
3.2 Bioamber shall not transfer or provide any CB1 Strain, or related biological materials, or biological materials derived from CB1 Strain to any third party, including Affiliates, unless (i) there is a written material transfer agreement in place with such third party that strictly limits such third party to non-commercial evaluation or testing of such strains or material and prohibits such third party from providing the strain or material to any other party, (ii) there is a written sub-license agreement in place under this Commercial License with such third party as provided under Section 4.2; and (iii) such third party is obligated not to file patent applications utilizing any data or results learned or obtained while evaluating CB1 Strain. In no event will Bioamber transfer the Licensed Tool Kit to any third party, except as provided in Section 2.5 of the Development Agreement.
3.3 Upon termination of this Commercial License for any reason (including the end of its term), Bioamber shall destroy and have its sublicensees destroy any and all CB1 Strain and any other biological materials relating to this Commercial License in their possession, and Bioamber shall certify such destruction in writing to Cargill, except with regard to sublicensees as provided in Section 4.3 of this Commercial License.
3.4 Bioamber shall have the first right to enforce the terms in the Sublicense Agreement with respect to the use and custody of the CB1 Strain. In the event Bioamber fails to enforce such provisions in the Sublicense Agreement within a reasonable period of time, Cargill shall have the right to step in as a named party and enforce such provisions, and Bioamber shall provide assistance thereto.
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3.5 Notwithstanding any other provision of this Commercial License, Bioamber shall use all reasonable efforts to ensure that no samples of the CB1 Strain are taken from its facilities, (i) Bioamber shall use the CB1 Strain only for the production of Product within the scope of the rights it is granted under Section 4 of this Commercial License, subject to the limitations specified in that section, (ii) Bioamber shall not reverse engineer, analyze, attempt to analyze, or have analyzed the physical or genetic structure of the CB1 Strain, and (iii) Bioamber shall not modify the CB1 Strain in any way or use it to develop other biological materials for any purpose whatsoever. Bioamber shall require its sublicensees to comply with the provisions set forth in this Section 3.5.
4. GRANTS TO BIOAMBER AND CARGILL, AND CARGILL OPTION
4.1 Subject to the terms and conditions of this Commercial License, Cargill hereby grants to Bioamber an exclusive, worldwide, royalty bearing license with a limited right to sublicense, subject to Section 4.2, under and to Licensed Patents, the CB1 Strain, the Know-How, Cargill Improvements, and Joint Improvements to make, have made, use, sell or otherwise transfer, offer for sale, export, and/or import the Product only.
4.2 Bioamber’s license under Section 4.1 and ownership rights under the Development Agreement include the right to grant sublicenses according to the following requirements:
a. Bioamber will be responsible for reporting on and paying all royalties that are due to Cargill in accordance with Section 5 of this Commercial License for Product sold or otherwise transferred by any of Bioamber’s sublicensees.
b. Any sublicenses granted by Bioamber under this Section 4.2 shall be in writing (“Sublicense Agreement”) and, prior to Bioamber granting any sublicenses to third parties, Cargill shall have the right to review and approve such Sublicense Agreement that will be used as a template for the sublicensing of the CB1 Strain. Any sublicenses granted by Bioamber under this Section 4.2 shall be subject to the terms and conditions of this Commercial License, including but not limited to the obligations on Bioamber concerning confidentiality and material transfer provisions as set forth in Section 3. Sublicenses shall not be granted in the geographies listed in Exhibit Y without the prior written approval of Cargill, such approval not being unreasonably withheld. In considering whether or not to grant sublicenses to third parties in the geographies listed in Exhibit Y, the Parties recognize that it is in their mutual interest to protect the CB1 Strain, Cargill Confidential Information, Know-How, Improvements, and Licensed Patents under license to Bioamber, and that the geographies listed in Exhibit Y have weaknesses in the legal systems protecting intellectual property. As such, the Parties agree to undertake joint evaluations of any licensing opportunity in these prohibited geographies, including, for example and without limitation, a risk assessment of the companies or consortiums envisaged as sublicensees and whether or not such sublicensees are acting under similar guiding principles as Cargill (a copy of Cargill’s Guiding Principles and Compliance Policy on Intellectual Property is attached as Exhibit Z), and that sublicenses shall not be granted in circumstances where Cargill’s intellectual property is at an unacceptable risk and/or where Cargill withholds its approval based on the joint evaluations of such licensing opportunity in the prohibited geographies. Further, Bioamber shall inform Cargill in writing prior to entering into confidential discussions with [***] as potential sublicensees of CB1 Strain, Cargill Confidential Information, Know-How, Improvements, and/or Licensed Patents.”
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c. No sublicensee under this Commercial License may grant any third party or any Affiliate of the sublicensee any rights in, any access to, or any copies or samples of the Licensed Patents, the CB1 Strain (and any related biological materials and biological materials derived from CB1 Strain), the Know-How, Cargill Improvements, Joint Improvements, and Confidential Information for any purpose.
d. Any non-remedied breach by a sublicensee of the terms of its sublicense or the requirements of this Commercial License shall not be considered to be a breach by Bioamber of this Commercial License.
e. Only the final commercial strains of CB1, which are adapted for commercially manufacturing Product will be provided to sublicensees. Additionally, Know-How may be provided to sublicensees, but in no event will the Licensed Tool Kit and pre-commercial CB1 strains be provided to sublicensees.
4.3 Effective on the date this Commercial License is terminated for any reason, prior to the end of its term (the “Termination Date”), and provided that any Bioamber sublicensee is not then in default under the terms of the sublicense to which it is a party, then Bioamber hereby assigns to Cargill those of its rights, title and interest under any such sublicense that are in effect on the Termination Date that relate to the license granted herein, including the right to receive the portion of the income from the sublicense that relates to the license provided herein, and Cargill undertakes to respect the terms of any such sublicense as though Cargill itself had contracted directly with such sublicensee, in accordance with the terms of any such sublicense so long as any such sublicensee respects the terms of its sublicense.
4.4 At any time up until the fifth anniversary of the completion of Milestone 3 as referenced in Section 2.3 of the Development Agreement and described in Exhibit A to the Development Agreement, Cargill shall have the options to purchase (i) a non-exclusive, royalty bearing license to make, have made, use, sell or otherwise transfer, offer for sale, export, and/or import succinic acid and salts thereof, including the Product under the rights granted to Bioamber under Section 4.1 and under Bioamber’s rights to Bioamber Improvements that are specified in the Development Agreement, and/or (ii) a non-exclusive royalty bearing license to make, have made, use, sell or otherwise transfer, offer for sale, export, and/or import succinic acid and salts thereof produced by use of Bioamber’s proprietary E. coli or other strain to ferment glucose and/or sucrose and/or cellulosic feedstock (in the case of this option (ii), such license shall be to and under any and all proprietary and intellectual property rights that are possessed or controlled by Bioamber respecting the relevant E. coli or other strain and the process and technology related to its use for the licensed purpose; such license shall include provisions to convey the strain, process and technology to Cargill as necessary for it to practice its license). In the event Cargill exercises either or both of these options, Cargill shall be [***]. The licensing by Cargill of the Bioamber technology to produce the Product, including but not limited to the strain and the downstream processing, shall be for a single plant on a single site, and shall be consistent with the standard practices and deal structure of Bioamber’s licensing program. Cargill shall have the right to purchase additional licenses to build additional plants, consistent with the principles described in this Section 4.4.
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4.5 Bioamber hereby grants to Cargill anexclusive, worldwide, royalty-free license with an unlimited right to sublicense under and to Bioamber Improvements to make, have made, use, sell or otherwise transfer, offer for sale, export, and/or import any and all products and services excluding the Product only.
4.6 This Commercial License shall serve as the framework for additional license grants should Bioamber exercise its option to alternative feedstock pursuant to Section 3 of the Development Agreement, and subject to the terms and conditions specified in Section 3 of the Development Agreement.
4.7 Cargill reserves any and all rights under and to Licensed Patents, the CB1 Strain, the Know-How, Cargill Improvements, Cargill Confidential Information, the Licensed Tool Kit, and Joint Improvements that are not exclusively granted to Bioamber under Section 4.1 of this Commercial License.
5. PAYMENTS, ROYALTIES, AND OTHER CONSIDERATION
5.1 In consideration of the rights granted to Bioamber under this Commercial License, including the grants under Section 4.1 herein, and the rights granted to Bioamber respecting Bioamber Improvements and Joint Improvements as specified in the Development Agreement, Bioamber agrees to the provisions of this Section 5. The Parties acknowledge and agree that the payments provided in this Section 5 and the obligations for sublicenses under Section 4.2 shall apply without regard to (i) what, if any patents issue respecting Licensed Patents and/or Improvements, the countries in which such patents issue, the scope of such patents, and whether or not any such patents are necessary or used to make, have made, use, sell or otherwise transfer, offer for sale, export, and/or import a Product and (ii) which party owns the CB1 Strain, Confidential Information, Licensed Patents, Know-How, and/or Improvements that may be necessary or used to make, have made, use, sell or otherwise transfer, offer for sale, export, and/or import a Product.
5.2 Bioamber shall pay an up-front fee to Cargill as specified in Section 2.1 of the Development Agreement. Bioamber shall also pay Cargill the milestone fees as specified in Section 2.3 of the Development Agreement.
5.3 Bioamber shall pay Cargill a royalty based on the Net Sale of the Product during each calendar quarter at the following rate: [***]. Bioamber shall be responsible for making the payments due to Cargill for its own Net Sales and the Net Sales of its sublicensees.
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5.4 Within sixty (60) days of the last day of each Quarter, Bioamber shall submit to Cargill quarterly reports and royalty payments for each immediately preceding Quarter. Each report shall contain the amount of Net Sales of Product in the preceding Quarter and the total amount of royalties due to Cargill.
5.5 Bioamber and its sublicensees shall keep complete, true and accurate books and records for the purpose of determining and verifying royalty and other payment obligations under this Section 5, including those specified in 5.3 and in 5.10. Bioamber agrees to permit its books and records to be examined by an independent auditor not more than once per year, for the purpose of verifying the payments for Cargill. Bioamber will ensure that sublicensees’ books and records can be examined by an independent auditor on an annual basis on Cargill’s behalf solely to ensure compliance with this Section 5. Bioamber will keep, and will ensure that its sublicensees keep, these books and records for a minimum of five (5) years following the end of the calendar year to which they pertain. Cargill will pay all costs associated with any audits for this purpose, however in the event such audit reveals a discrepancy greater than five percent (5%) of the total amount of royalties owed to Cargill, Bioamber agrees to pay for the cost of such audit (including sublicensee audits).
5.6 Any payments to be made hereunder that remain due and unpaid after a period of sixty (60) calendar days after the date due shall accrue interest compounded daily, commencing as of the date payment was first past due, at the prime interest rate of Citibank, N.A., in effect on the first day of the calendar month in which the payment first becomes overdue.
5.7 No part of any amount payable to Cargill by Bioamber may be reduced due to any counterclaim, set off, adjustment or other right.
5.8 If in any one year period commencing with the Effective Date or the annual anniversary thereof the total royalty payments made by Bioamber to Cargill is less than $[***] United States dollars, Bioamber shall make additional payment to Cargill to bring the total to $[***] United States dollars within thirty (30) days of the end of that one year period. In the event that Bioamber’s royalty payments owed in any given year are less than $[***] and Bioamber elects not to pay an additional amount to bring the total to $[***], Cargill’s sole remedy shall be to transform the license it granted to Bioamber under Section 4.1 from an exclusive to a non-exclusive license by written notice to Bioamber. Upon such written notice, (i) Cargill shall have the right to freely license others with respect to the rights granted to Bioamber under Section 4.1 without any accounting to Bioamber and (ii) Bioamber shall and hereby does grant to Cargill a non-exclusive, worldwide, royalty-free license, with an unlimited right to sublicense, under and to Bioamber Improvements to make, have made, use, sell or otherwise transfer, offer for sale, export, and/or import succinic acid and salts thereof, including Products. Except as specified in this Section 5.8, such conversion of the exclusive grant by Cargill under Section 4.1 to a non-exclusive grant shall not otherwise change any term or obligation of this Commercial License, including Bioamber’s payment obligations. For the [***] after the Effective Date or up until [***] following completion of Milestone 3 as specified in the Development Agreement, whichever occurs first, the amount paid by Bioamber to Cargill for development work under the Development Agreement in any one year period commencing with the Effective Date or the annual anniversary thereof (but not including any up-front or milestone payments) [***].
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5.9 In the event that (i) Milestone 3 as specified in the Development agreement is achieved, (ii) the CB1 Strain and fermentation protocols are successfully scaled up, (iii) Bioamber receives any applicable and necessary regulatory approvals to use the CB1 Strain to make and sell Product in any country, and (iv) the economics of using the CB1 Strain technology is no less favorable than use of Bioamber’s current E. coli strain technology (including OPEX and CAPEX economic considerations), then (a) Bioamber will terminate all of its then existing agreements with licensees licensed to use technology other than the CB1 Strain to make and sell succinic acid and salts thereof in any and all countries where no regulatory approvals are required or the necessary regulatory approvals for use of CB1 Strain to make and sell the Product have been obtained, and Bioamber will require such terminated licensees to become sublicensees under this Commercial License, and (b) Bioamber will sublicense only the CB1 Strain technology under this Commercial License to all future Bioamber licensees for the production of succinic acid and salts thereof in any and all countries where no regulatory approvals are required or the necessary regulatory approvals for use of CB1 Strain to make and sell the Product have been obtained.
5.10 In addition to the royalties specified in this Section 5, including royalties for sales and other transfers of Product by sublicensees, Bioamber shall make the following calculation and payment to Cargill. Bioamber shall determine the amount by which the up-front payments, minimum and other cash payments, and royalties that Bioamber receives from any and all sublicensees in consideration for a sublicense under this Commercial License exceeds the up-front payments, minimum and other cash payments, and royalties, that Bioamber either (i) would receive from such sublicensee under its prior license to Bioamber’s E. Coli technology for the production of succinic acid (where such sublicensee had such prior license) or (ii) would have received from such sublicensee if such sublicensee would have had a license to Bioamber’s E. Coli technology for the production of succinic acid under the most favorable license terms existing at the time Bioamber begins switching its licensees to the CB1 Strain technology (where such sublicensee never had such license to Bioamber’s E. Coli technology). The amount by which the up-front payments, minimum and other cash payments, and royalties that Bioamber receives from any and all sublicensees in consideration for a sublicense under this Commercial License exceeds those from the licenses to Bioamber’s E. Coli technology as specified in the prior sentence is the “Incremental Value”. Bioamber shall report and pay to Cargill [***] of the Incremental Value within thirty (30) days of Bioamber’s receipt of the sublicensee payment subject to this payment to Cargill. Cargill shall have the right, through a mutually acceptable third party to audit Bioamber’s license and sublicense agreements to determine the applicable Incremental Value and determine Bioamber’s payment requirements under this Section 5.10.
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6. INTELLECTUAL PROPERTY
6.1 Intellectual property rights, including rights respecting Improvements, are subject to the provisions of Section 5 of the Development Agreement and the terms of this Commercial License.
7. TERM AND TERMINATION
7.1 The term of this Commercial License shall be from the Effective Date and will continue either (a) until no issued Licensed Patents and no issued patents respecting Improvements remain valid and enforceable, or (b) [***] years after the date of first commercial sale of Product made in a fully-operational plant (not a sale from a pilot plant), whichever is sooner. Following this initial term (the “Initial Term”), this Commercial License shall automatically renew for successive [***], and Bioamber shall provide Cargill at least six (6) month notice in the event it decides to terminate this Commercial License prior to any extensions of the Initial Term. Bioamber shall provide written notice to Cargill as to the date of such first commercial sale and in the event of a dispute the Parties shall resolve such dispute in good faith. Termination of the Development Agreement for any reason, including its end of term, will not terminate this Commercial License.
7.2 Following the Initial Term, Section 5.3 of this Commercial License shall only apply to the production of sublicenses that continue to pay licensing revenues to Bioamber (“Eligible Production”). The Eligible Production for the purposes of calculating Section 5.3 of this Commercial License shall be determined each three-month period during such an extension period. Notwithstanding the foregoing, Bioamber, should it elect to do so, shall continue to pay the annual minimum royalty provided in Section 5.8.
7.3 Either Party may terminate this Commercial License at any time for a material breach by the other Party, provided (i) that the Party alleging the breach provides the other with written notice specifying the breach, and (ii) the breach is not cured within one hundred twenty (120) days. To the extent permitted under applicable law, either Party may terminate this Commercial License in the event of the other Party’s bankruptcy, insolvency, or the filing of a petition therefore. A Party shall promptly give the other Party notice of its bankruptcy, insolvency, or intent to file a petition therefore, whereupon the other Party may immediately terminate this Commercial License on written notice to that Party.
7.4 Bioamber may terminate this Commercial License upon ninety (90) days written notice to Cargill.
7.5 Termination of this Commercial License for any reason, including the end of its term, terminates all rights and obligations hereunder, including licenses and sublicenses, except as otherwise specified in this Commercial License.
7.6 Upon termination of this Commercial License by Bioamber pursuant to Section 7.4 or upon Cargill’s termination of this Commercial License pursuant to Section 7.3 as a result of Bioamber’s breach: (i) all of Bioamber’s rights specified in Sections 5.2.1 and 5.2.2 in the Development Agreement terminate; (ii) Bioamber shall and hereby does assign to Cargill all
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of its rights, title and interest in and to Bioamber Improvements and Bioamber will have no remaining rights respecting Bioamber Improvements; and (iii) such termination shall have no affect whatsoever on any license or other intellectual property rights granted from Bioamber to Cargill under the terms of the Commercial License or the Development Agreement.
7.7 Expiration or termination of this Commercial License shall not: (a) relieve Bioamber or its sublicensees of their obligation to make payments or fulfill any obligations to Cargill incurred prior to expiration or termination including quarterly payments for a completed milestone, other royalty and payment obligations, and a pro rata portion of the minimum payment due for the partial year as of the date of termination, or (b) relieve Cargill of its obligations to Bioamber incurred prior to expiration or termination.
7.8 Material breach of this Commercial License by Bioamber shall include, but not be limited to, the failure of Bioamber to use its best efforts to seek regulatory approval pursuant to Section 2.2 or pay any amounts due under Section 5.
7.9 Expiration or termination of this Commercial License, however effectuated, shall not release the Parties from their rights and obligations incurred prior to the expiration or termination of this Commercial License. Except as otherwise provided in this Commercial License, the following provisions survive any expiration or termination of this Commercial License: Sections 3 (Confidential Information & Transfer of Strains), 4.3, 4.4, 4.5, 5 (Payments, Royalties, and Other Consideration, except for Sections 5.8 (Bioamber’s obligation to pay the $[***] annual minimum payment shall not survive, but Cargill’s license and rights granted thereunder shall survive), 5.9 and 5.10), 6 (Intellectual Property), 7 (Term and Termination), 8 (Disclaimer of Warranty, Limitation of Liability), 9 (WRF Patents), and 10 (Miscellaneous).
8. DISCLAIMER OF WARRANTY, LIMITATION OF LIABILITY
8.1 CARGILL EXPRESSLY DISCLAIMS ALL REPRESENTATIONS AND WARRANTIES, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION, WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE.
8.2 SUBJECT TO SECTION 8.1, BOTH PARTIES EXPRESSLY DISCLAIM ALL REPRESENTATIONS AND WARRANTIES, EXPRESSED OR IMPLIED, OF NON INFRINGEMENT OF THIRD PARTY INTELLECTUAL PROPERTY RIGHTS OR OTHER CONFIDENTIAL INFORMATION.
8.3 SUBJECT TO SECTIONS 8.1 AND 8.2, IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY, OR TO THE OTHER PARTY’S OFFICERS, EMPLOYEES OR REPRESENTATIVES, OR TO ANY THIRD PARTY, FOR ANY INDIRECT, CONSEQUENTIAL, INCIDENTAL, SPECIAL, PUNITIVE OR EXEMPLARY DAMAGES OF ANY KIND (INCLUDING, BUT NOT LIMITED TO, LOST BUSINESS, LOST PROFITS, DAMAGE TO GOODWILL OR REPUTATION AND/OR DEGRADATION IN VALUE OF BRANDS, TRADEMARKS, TRADENAMES, SERVICE NAMES OR SERVICE MARKS) WHETHER ARISING OUT OF BREACH OF CONTRACT, WARRANTY, TORT (INCLUDING NEGLIGENCE, FAILURE TO WARN OR STRICT LIABILITY) OR OTHERWISE.
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8.4 Cargill and its Affiliates shall not be liable to Bioamber, and Bioamber shall indemnify and hold harmless Cargill and its Afffiliates for any loss, claim, damage, or liability, of whatsoever kind or nature, which may arise from or in connection with Bioamber’s and Bioamber’s sublicensee’s use, handling, or storage of CB1 Strain and/or Confidential Information received from Cargill.
9. WRF PATENTS
9.1 As referenced in Section 6 of the Development Agreement, Washington Research Foundation (WRF) is the owner of several patents relating to the expression of polypeptides in yeast (“WRF Patents”). Bioamber shall be solely responsible for acquiring any licenses or other permissions as described in Section 6 of the Development Agreement from WRF respecting the WRF Patents that may be necessary for Bioamber to exercise its rights under this Commercial License. Cargill shall have no liability to Bioamber for Bioamber’s acts or failure to act with respect to the WRF Patents, or with respect to any other third party that may have intellectual property rights that may be necessary for Bioamber to exercise its rights under this Commercial License.
10. MISCELLANEOUS
10.1 This Commercial License is personal to the parties hereto and shall not be assigned by either Party without the prior written consent of the other Party. Notwithstanding the foregoing, no assignment of this Commercial License shall be made effective unless (i) any breach or default of the intended assignor is cured by either the intended assignor or the intended assignee, or (ii) the intended assignee can give reasonable assurances of its ability to comply with the terms and conditions of this Commercial License, and to fulfill its intent. This Commercial License shall be binding upon and shall inure to the benefit of the Parties and their permitted successors and assigns.
10.2 All notices and reports respecting this Commercial License shall be sent via facsimile, mail, or electronically to the appropriate address of the Party as given below. If either Party wishes to change its address for notification, it shall promptly notify the other Party in writing of such change of address.
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| If to Cargill: |
Xxxxxx Xxxxxxxx | |
| 00000 Xxxxxxxxxx Xxxx. | ||
| Xxxxxxxxxx, XX 00000 | ||
| Phone: [***] | ||
| Fax: 000-000-0000 | ||
| [***] | ||
| with a copy to: |
Xxxxxxx Incorporated | |
| Corn Milling Intellectual Property Atty. | ||
| 00000 XxXxxxx Xxxx Xxxx | ||
| Xxxxxxxx 00 | ||
| Xxxxxxx, XX 00000-0000 | ||
| If to Bioamber: |
Xxxxxxx Xxxxxxx | |
| Bioamber SAS | ||
| 0000 Xxxx-Xxxxxxxx Xxxx | ||
| Xxxxx 0000 | ||
| Xxxxxxxx, Xxxxxx | ||
| Xxxxxx | ||
| X0X0X0 | ||
| Phone: 000-000-0000 | ||
| Fax: 000-000-0000 | ||
| [***] | ||
| with a copy to: |
Xxxxxx Xxxxxxxx, Esq | |
| Xxxxxx Xxxxxxxx Xxxxxxx, x.x. | ||
| 2000-2000 XxXxxx Xxxxxxx Xxxxxx | ||
| Xxxxxxxx, Xxxxxx | ||
| Xxxxxx | ||
| X0X 0X0 | ||
| Phone: 000-000-0000 | ||
| Fax: 000-000-0000 | ||
| [***] | ||
10.3 Nothing contained herein shall limit the right of any Party to seek specific performance, injunctive relief or other non-monetary remedies in any court of competent jurisdiction.
10.4 If any provision or covenant, or any part thereof, of this Commercial License should be held by any court of competent jurisdiction to be invalid, illegal or unenforceable, either in whole or in part, such invalidity, illegality or unenforceability shall not affect the validity, legality or enforceability of the remaining provisions or covenants, or any part thereof, of this Commercial License, all of which shall remain in full force and effect.
10.5 This Commercial License shall be governed, interpreted, and construed in accordance with the laws of Minnesota without regard to the principles of conflicts of laws.
10.7 This Commercial License and the Development Agreement constitutes the entire agreement between the Parties with respect to the subject matter hereto, and no other representations, guarantees, covenants, or agreements shall be binding or affect any provisions hereof. This Commercial License may be modified only in a written amendment signed by both Parties hereto. In the event that the terms of this Commercial License conflict with the Terms of the Development Agreement, this Commercial License shall control. Provisions of the Development Agreement which are referenced by this Commercial License shall survive termination or end of term of the Development Agreement for the purpose referenced in this Commercial License.
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IN WITNESS WHEREOF, the Parties hereto have executed this Commercial License the day, month, and year first above written.
| Xxxxxxx, Inc. | Bioamber S.A.S. | |||||||
| By: | /s/ Xxxx Xxxxxxx | By: | /s/ X.X. Xxx | |||||
| Name: | Xxxx Xxxxxxx | Name: | X.X. Xxx | |||||
| Title: | VP BioTDC | Title: | Director General | |||||
| Date: | 4/16/10 | Date: | April 15 2010 | |||||
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EXHIBIT X
Affiliates
The following shareholders of Bioamber, until such time that they cease to be a shareholder of Bioamber, at which point they will no longer be considered Affiliates:
DNP Green Technology
Agrorecherches et Developpement (ARD)
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EXHIBIT Y
Prohibited Geographies
[***]
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Exhibit Z
Cargill’s Guiding Principles
Guiding Principles
| • | Cargill will comply with the laws of all countries to which it is subject. |
| • | Cargill will not knowingly assist any third party to violate any law of any country, by creating false documents or by any other means. |
| • | Cargill will not pay or receive bribes or participate in any other unethical, fraudulent, or corrupt practice. |
| • | Cargill will always honor all business obligations that it undertakes with absolute integrity. |
| • | Cargill will keep its business records in a manner that accurately reflects the true nature of its business transactions. |
| • | Cargill managers and supervisors will be responsible that employees, consultants and contract workers under their supervision are familiar with applicable laws and company policies and comply with them. Further, they will be responsible for preventing, detecting, and reporting any violations of law of Cargill policies. |
| • | Cargill employees will not become involved in situations that create a conflict of interest between the company and the employee. |
| • | Every year, all Cargill employees sign an agreement to live these principles. |
Compliance Policy on Intellectual Property
[*** 2 pages omitted.]
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AMENDMENTS TO COMMERCIAL LICENSE AGREEMENT AND DEVELOPMENT AGREEMENT
WHEREAS, Xxxxxxx, Xxxxxxxxxxxx (“Cargill”) and BioAmber S.A.S. (“Bioamber”) entered into a Development Agreement having an Effective Date of April 15th, 2010, as amended on July 5th, 2011 (the “Development Agreement”);
WHEREAS, Cargill and Bioamber entered into a Commercial License Agreement having an Effective Date of April 15, 2010 (the “Commercial License”);
WHEREAS, Bioamber now desires to amend the Development Agreement to allow Bioamber to fund a research project being conducted by the Biotechnology Research Institute (“BRI”), which involves the molecular re-engineering of a Methylotroph owned by BRI and the development of a lab scale fermentation design for using the re-engineered methylotroph to make succinic acid or salts thereof from a methanol feedstock (the “BRI Project”). The BRI Project will be co-funded by funds available from the Canadian National Research Council;
WHEREAS, Bioamber further desires to scale-up the production of succinic acid using a Corynebacteria biocatalyst (MCC-17) available from Mitsubishi Chemical Corporation (“MCC”) and to possibly produce succinic acid or salts using MCC-17 as an alternative to the E. coli BioAmber has licensed from the DOE at: (1) Bioamber’s existing demonstration-scale succinic acid production facility located at Pomacle, France; and (2) a succinic acid production facility located at Sarnia, Ontario Canada having a maximum production capacity of 35,000 metric tons of succinic acid per year (the “Sarnia Plant”). Together these scale-up projects will be referred to as the “Scale-up and Production Project”;
WHEREAS, Cargill is willing to allow Bioamber to fund the BRI Project and to conduct the Scale-up and Production Project, subject to the following terms and conditions. Now therefore the Parties agree:
Amendment To the Development Agreement
A. Section 13.9 of the Development Agreement is amended to add the following at the end of the Section:
“Notwithstanding the above, Bioamber may fund the BRI Project up until the Methylotroph (or re-engineered Methylotroph) demonstrates the ability to produce succinic acid (or salts thereof) from any feedstock at a concentration of [***] grams/liter succinic acid (or salts thereof). Within thirty (30) days of the Methylotroph (or re-engineered Methylotroph) demonstrating such production levels of succinic acid, Bioamber will cease any further funding and/or other support for the BRI Project. Further Bioamber will require that any unexpended funds received from Bioamber be utilized for a project other than the BRI Project.
B. New Section 13.10 is added to the Development Agreement as set forth below:
“13.10 Notwithstanding the provisions of section 13.9, Bioamber may conduct the Scale-up and Production Project, subject to Bioamber hereby agreeing to convert the demonstration-scale Pomacle France succinic acid production facility and the Sarnia Plant to solely utilize CB1 as the biocatalyst for the production of succinic acid (and/or salts thereof). This conversion will be carried out according to the provisions of Section 5.9 of the Commercial License, it being understood that all economic obligations of item (iv) above will be relative to the E. coli strain technology, not the Mitsubishi strain technology. In order to enable such conversion, Bioamber will put in place agreements with the owners/operators of the Sarnia Plant that will enable Bioamber to require such conversion of the Sarnia Plant to solely use CB1 for the manufacture of succinic acid as described above.”
Amendment To the Commercial License
A. Section 5.9 of the Commercial License is amended to add the following at the end of the Section:
“Bioamber shall use best efforts to obtain regulatory approvals for the use of the CB1 Strain in all countries where Bioamber and/or a Bioamber licensee are using any strain other than the CB1 strain for the production of succinic acid and/or salts thereof. Additionally, Bioamber shall use best efforts to scale up the CB1 Strain and fermentation protocols utilizing the CB1 Strain.”
Nothing in these amendments will reduce Bioamber’s obligations to replace MCC-17 and Bioamber’s current E. coli strain with CB1 in all the existing and future succinic acid production facilities of Bioamber and Bioamber licensees, according to the provisions of Section 5.9 of the Commercial License.
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| XXXXXXX, XXXXXXXXXXXX | ||
| By: | /s/ Xxxxxx Xxxxxxxx | |
| Name: Xxxxxx Xxxxxxxx | ||
| Title: Director, Bio Technology Development Center, Minneapolis | ||
| Date: |
10/19/2011 | |
| BIOAMBER, SAS | ||
| By: | /s/ Xxxx-Xxxxxxxx Huc | |
| Name: Xxxx-Xxxxxxxx Huc | ||
| Title: President | ||
| Date: |
October 15, 2011 | |
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