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Exhibit 10.27
RESEARCH AGREEMENT
Effective: OCTOBER 4, 2001 ("Effective Date")
DOW CORNING CORPORATION having a principal place of business at 0000
Xxxxxxxx Xxxx, X.X. Xxx 000 Xxxxxxx, Xxxxxxxx 00000-0000 ("DCC") and GENENCOR
INTERNATIONAL, INC. having a principal place of business at 000 Xxxx Xxxx Xxxx,
Xxxx Xxxx, XX 00000-0000 ("GCOR") (collectively referred to herein as the
"Parties") agree as follows:
WHEREAS, the Parties have signed a certain Memorandum of Understanding
dated [...***...] (the "MOU") whereby the Parties intend to form a pre-eminent
alliance in the Field of Silicon Biotechnology and to negotiate and execute a
definitive Research Agreement reflecting a research and development alliance and
certain licenses in the Silicon Biotechnology Field (the "Definitive
Agreement");
WHEREAS, the Parties have signed a certain Interim R&D Agreement dated
[...***...] (the "Interim Agreement") pursuant to which the Parties have
undertaken certain interim research prior to the execution of the Definitive
Agreement; and
WHEREAS, the Parties intend for this Research Agreement to constitute
the Definitive Agreement as defined in, and contemplated by the MOU.
NOW THEREFORE, the Parties agree as follows:
ARTICLE I
DEFINITIONS
1.1 "Affiliate" shall mean any corporation or other entity that directly, or
indirectly through one or more intermediaries, controls, is controlled by, or is
under common control with the designated party but only for so long as such
relationship exists. Solely for purposes of this Section 1.1, "Control" shall
mean ownership of greater than fifty percent (>50%) of the shares of stock
entitled to vote for directors in the case of a corporation and greater than
fifty percent (>50%) of the interests in profits in the case of a business
entity other than a corporation.
1.2 "Alliance Rights" shall mean any invention or discovery, patentable or
otherwise, and patent rights associated therewith, which arise out of the R&D
Program, and which is first conceived and/or reduced to practice during the R&D
Program Term.
1.3 "Biological Material" shall mean material including strains, genes, vectors,
plasmids, and other DNA sequences or constructs, libraries and the like,
together with any progeny, mutants, derivatives or replicated forms thereof, and
any information relating thereto.
1.4 "Commercial Entity" shall have the meaning set forth in Section 8.1.
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1.5 "Commercial Phase" shall mean the phase of the alliance focused on
commercialization of products developed during the Research Phase.
1.6 "Controlled or Controls" shall mean with respect to any patent rights, the
ability to grant licenses or sublicenses in the Silicon Biotechnology Field to
and/or disclose such without violating the terms of any bona fide agreement with
a Third Party to which such patent right is subject.
1.7 "DCC Background Rights" shall mean all know-how and patent rights owned or
Controlled by DCC as of the Effective Date of this Agreement (excluding any such
rights that are subject to an exclusive license to a Third Party) or developed
by DCC independently during the R&D Program Term and useful for the research,
development and/or commercialization of products or processes in the Silicon
Biotechnology Field.
1.8 "Designated Management Representative" shall in the case of DCC be
[...***...] and in the case of GCOR be [...***...], which representatives shall
be responsible for conflict resolution and decision making which is unresolved
by the Steering Committee.
1.9 "Development Activities" shall mean activities undertaken by either Party on
a R&D Program at the decision of the Steering Committee which activities relate
to the scale up of a product or process which meets certain agreed upon
functional performance criteria and/or cost specifications, such activities to
be at a scale consistent with commercial validation.
1.10 "FTE" shall mean full time equivalent of GCOR research and development
personnel including direct and indirect costs.
1.11 "GCOR Background Rights" shall mean all know-how and patent rights owned or
Controlled by GCOR as of the Effective Date of this Agreement (excluding any
such rights that are subject to an exclusive license to a Third Party) or
developed by GCOR independently during the R&D Program Term and useful for the
research, development and/or commercialization of products or processes in the
Silicon Biotechnology Field.
1.12 "Milestones" shall have the meaning set forth in Section 3.2.
1.13 "Project" shall mean each specific project with its related Work Plan
approved by the Steering Committee for incorporation in the R&D Program.
1.14 "Quarter" shall mean each calendar three (3) month period during the R&D
Program Term as measured from the Effective Date.
1.15 "R&D Program" shall have the meaning set forth in Section 2.4.
1.16 "R&D Program Term" shall have the meaning set forth in Section 10.2.
1.17 "Research Phase" shall mean the phase of the alliance focused primarily on
the R&D Program.
1.18 "Silicon Biotechnology Field" shall mean [...***...].
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1.19 "Third Party" shall mean any person or persons including any individual
business entity, partnership, corporation, or other entity other than Dow
Corning Corporation and Affiliates or Genencor International, Inc and
Affiliates.
1.20 "Work Plan" shall mean the detailed work plan developed for each Project
within the R&D Program as described in Section 2.4.
ARTICLE II
THE RESEARCH AND DEVELOPMENT ALLIANCE
2.1 [...***...] OF ALLIANCE. During the R&D Program Term, except for the
pre-existing relationships of GCOR in the Silicon Biotechnology Field as
disclosed in Exhibit B, [...***...] through the Alliance in the Silicon
Biotechnology Field.
During the R&D Program Term, except for the pre-existing relationships
of [...***...] in the Silicon Biotechnology Field as disclosed in Exhibit C,
[...***...] will first notify the Alliance in writing of any biotechnology-based
opportunities within the Silicon Biotechnology Field of which [...***...] is or
becomes aware. [...***...]
2.2 SCOPE OF THE ALLIANCE. The initial focus of the Alliance is the research,
development and commercialization of products and processes within the Silicon
Biotechnology Field, however, as appropriate and upon mutual agreement of the
Parties, the Alliance may be expanded to include [...***...].
2.3 STEERING COMMITTEE.
(a) MEMBERSHIP. A committee (the "Steering Committee") consisting of
three (3) members appointed by GCOR and three (3) members appointed by
DCC shall be established in order to monitor and coordinate the
Alliance efforts under this Agreement including the conduct of the R&D
Program. Each Party has one (1) vote total on any matter within the
scope of the R&D Program coming before the Steering Committee. The
Steering Committee may invite additional representatives from both
parties to participate in meetings as deemed necessary and appropriate.
(b) RESPONSIBILITIES. The Steering Committee shall have general
responsibility, subject to the provisions of Section 2.3(d) below, for
directing the research and development efforts under the R&D Program
and for monitoring the work done under the R&D Program. The Steering
Committee shall in good faith discuss matters related, but not limited
to:
(i) Selecting and prioritizing projects, setting priorities and
time frames for the performance of certain activities and
deliverables outlined in the agreed Work Plan for each
project;
(ii) Directing the Alliance's research and development efforts
under the R&D Program;
(iii) Reviewing progress versus agreed work plans for each
project;
(iv) Making recommendations on changing, expanding or
discontinuing research on project(s);
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(v) Reviewing budgets and funding requirements for each goal or
project within the R&D Program subject to the funding
obligations set forth in this Agreement;
(vi) Resolving possible conflicts of interest;
(vii) Recommending inclusion of any third parties or any
intellectual property rights or know-how belonging to third
parties in the R&D Program;
(viii) Reviewing personnel requirements for each goal or project
within the R&D Program; and
(ix) Reviewing progress toward Milestones and making
recommendations to pay milestone payments pursuant to the
project Work Plans.
(c) MEETINGS. The Steering Committee shall hold meetings at such times
and places as shall be determined by a majority of the entire
membership of the Steering Committee, provided that in no event shall
such meetings be held less frequently than once every quarter. Such
meetings may be held in person or by telephone conference, provided
that any decision made during a telephone conference is evidenced by a
confirmed writing signed by one or more of the members of the Steering
Committee from each Party.
(d) VOTES. Actions to be taken by the Steering Committee pursuant to
the terms of this Agreement shall only be taken following the unanimous
vote of the Steering Committee. The Steering Committee shall attempt to
have all decisions approved by all members of the Steering Committee.
If the Steering Committee is unable to reach a unanimous decision, such
matters shall be referred to the Designated Management
Representative(s) of each Party for consideration and action. While the
Steering Committee may take actions to coordinate the efforts taken by
each Party under the R&D Program and to make recommendations concerning
the matters set forth in Section 2.3(b), the Steering Committee shall
not have any authority to enter into any contract or to amend the terms
and condition of this Agreement or incur any liability on behalf of
either Party but shall be required to refer any such matters to, and
obtain authorization from, the respective management of each Party.
Notwithstanding the creation of the Steering Committee, each Party
shall retain the rights, powers and discretion granted to it under this
Agreement and such Steering Committee shall not be delegated with any
such rights, powers or discretion unless the Parties expressly agree in
writing.
(e) EXPENSES. Each Party shall bear all expenses of its representatives
related to the Steering Committee and the attendance at any meetings of
the Steering Committee.
2.4 RESEARCH AND DEVELOPMENT PROGRAM. Using the Steering Committee as the device
through which agreement is reached, DCC and GCOR will jointly agree on the
research and development work to be performed under this Agreement, including
which Party is responsible for such work, whether it is to be performed jointly
by the Parties or solely by one of the Parties, relevant time lines for progress
of such work and such other factors as are deemed necessary and appropriate to
conduct the work. A summary of the work to be performed under the Agreement,
including the initial R&D Program proposals for [...***...] (the "R&D Program"),
is attached hereto and incorporated in the
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Agreement as Exhibit D. Detailed Work Plans, including objectives, time lines,
personnel requirements, milestones, performance metrics and deliverables, will
be developed for each Project within the R&D Program. Said Work Plans, when
generated and agreed upon by the Parties, will be incorporated into this
Agreement. Work Plans may be amended by mutual agreement of the Parties and such
amended Work Plans shall be attached hereto and incorporated herein.
2.5 INTERIM RESEARCH AGREEMENT. Upon execution of this Agreement, the
Interim Agreement shall automatically terminate, subject to the Parties rights
and obligations arising from the Interim Research Agreement prior to its
termination.
2.6 FUNDING OF ALLIANCE BY DCC.
(a) FUNDING. Subject to the terms and conditions set forth herein, DCC
shall fund GCOR FTE's at a rate of [...***...] as payment for the
research to be performed by GCOR under the R&D Program ("Research
Funds"), such funding to be paid in accordance with the terms of
Section 2.6(b).
(b) PAYMENT. At the end of each Quarter during the Program Term, GCOR
will send DCC an invoice for the FTE's expended on the R&D Program
during the prior Quarter. DCC will pay GCOR the amount invoiced within
thirty (30) days of receipt of the invoice.
(c) STAFFING. Staffing levels will be mutually agreed to by the Parties
and through the operation of the Steering Committee and based on the
needs of the R&D Program. The overall levels of personnel allocated to
the R&D Program will be reviewed and adjusted (as appropriate)
quarterly by the Steering Committee to reflect the needs of the R&D
Program. Subject to agreement by the Steering Committee to the
contrary, it is expected that the overall level of personnel allocated
by GCOR over the [...***...] will be approximately [...***...]
scientific personnel .
(d) CONFIRMATION OF STAFFING. GCOR will, at the end of each Quarter,
provide DCC a report confirming the man-months expended during the
prior Quarter.
2.7 DCC COSTS. DCC will pay all its own expenses for work on the R&D
Program, with no cost sharing by GCOR.
2.8 DEVELOPMENT COSTS. Each Party will pay its own expenses for Development
Activities on the R&D Program.
2.9 PERFORMANCE. Payment of the Research Funds shall be a condition to
GCOR's obligation to perform the work set out in the R&D Program, and shall be
a basis for termination of this Agreement by GCOR under Section 10.3 if such
payments are not timely made. Subject to adjustments in staffing made by the
Steering Committee, adequate staffing shall be a condition to DCC's obligation
to make payments pursuant to Section 2.6, and shall be a basis for termination
of this Agreement by DCC under Section 10.3 if staffing is not adequately
provided.
2.10 PERFORMANCE OBLIGATIONS. The R&D Program shall be conducted at and/or
coordinated from the facilities of each Party under the direction and
supervision of the
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Steering Committee. GCOR shall use reasonable commercial efforts to diligently
carry out and perform its tasks and duties under the R&D Program within the time
periods set out in the Work Plan(s). Each Party shall be responsible for the
administrative management and, subject to the funding obligations of DCC under
Section 2.6(a), fiscal control and all other expenses incurred by it for tasks
and duties assigned to it in the R&D Program. So long as the R&D Program
continues, GCOR and DCC shall periodically (at least quarterly) provide to the
Steering Committee progress reports summarizing the technical progress of their
respective work. Notwithstanding any other provision herein, provided GCOR shall
have used reasonable commercial efforts to perform its tasks and duties under
the R&D Program as herein required, GCOR shall not be liable for any failure to
achieve its objectives described in the Work Plan on a timely basis or at all.
ARTICLE III
PAYMENTS
3.1 UPFRONT PAYMENT. Promptly upon execution of the Research Agreement and in
consideration for [...***...] in the Silicon Biotechnology Field through the
Alliance, DCC will pay GCOR a [...***...] lump sum payment of Twelve Million US
Dollars ($12,000,000).
3.2 R&D BASED MILESTONES. Pursuant to the MOU, the Parties have agreed that DCC
will make payments to GCOR of up to [...***...] for achievement of certain
performance milestones ("Milestones"). Upon agreement by the Parties based on
the Steering Committee's review of the scientific data and results of the R&D
Program that a particular Milestone set forth in a Project Work Plan was
achieved, DCC will make the specific non-refundable, lump sum payment(s) to GCOR
associated with the performance milestones. The Milestone(s) that trigger such
lump sum payments will be agreed to through operation of the Steering Committee
for appropriate Project(s) within the R&D Program. The objectives for the
Milestones, timelines or other factors affecting payment and the relevant
payment will be agreed upon and set forth in the Work Plan for each relevant
Project.
3.3 TIMING OF PAYMENT. Promptly, and no later than sixty (60) days after the
Steering Committee determines that a Milestone has been met, DCC shall pay GCOR
the applicable Milestone Payment.
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ARTICLE IV
INTELLECTUAL PROPERTY
4.1 BACKGROUND RIGHTS. GCOR Background Rights shall continue to be owned or
Controlled by GCOR, subject to the licenses granted to DCC pursuant to Section
4.2. DCC Background Rights shall continue to be owned or Controlled by DCC,
subject to the licenses granted to GCOR pursuant to Section 4.3.
4.2 GCOR LICENSE TO DCC. In consideration of the license granted to GCOR
pursuant to Section 4.3, GCOR hereby grants to DCC and DCC accepts a [...***...]
license to GCOR Background Rights for the research, development and
commercialization of products or processes in the Silicon Biotechnology Field.
Periodically and at least annually during the R&D Program Term, GCOR will
identify and list GCOR Background Rights that are deemed to be relevant to the
research, development and commercialization of products or processes in the
Silicon Biotechnology Field or which were specifically utilized by or for the
Alliance during the R&D Program (the "GCOR Listed Rights"). The GCOR Listed
Rights are specifically identified and described in Exhibit E.
4.3 DCC LICENSE TO GCOR. In consideration of the license granted to DCC pursuant
to Section 4.2, DCC hereby grants to GCOR and GCOR accepts a [...***...] license
to DCC Background Rights for the research, development and commercialization of
products or processes in the Silicon Biotechnology Field. Periodically and at
least annually during the R&D Program Term, DCC will identify and list DCC
Background Rights that are deemed to be relevant to the research, development
and commercialization of products or processes in the Silicon Biotechnology
Field or which were specifically utilized by or for the Alliance during the R&D
Program (the "DCC Listed Rights"). The DCC Listed Rights are specifically
identified and described in Exhibit F.
4.4 [...***...] ALLIANCE RIGHTS. All right, title and interest in any inventions
including patent rights relating thereto arising from the R&D Program,
regardless of whether those inventions are made solely by employees or agents of
either DCC or GCOR or jointly by employees or agents of both DCC and GCOR, will
be [...***...] (the "Alliance Rights"). Inventorship shall be determined in
accordance with US Patent Law. To the extent Third Parties are included in the
R&D Program, the Parties will endeavor to obtain ownership of any inventions and
related patent rights associated with inventions made by Third Party employees.
However, in the event the Parties are unable to obtain ownership, they will at a
minimum obtain a license on behalf of both Parties to said inventions and
related patent rights.
4.5 COMMERCIAL RIGHTS TO USE ALLIANCE RIGHTS. Upon formation of the Commercial
Entity, the Alliance Rights will either be exclusively licensed or assigned to
the Commercial Entity by DCC and GCOR. At such time the Parties will mutually
agree whether to license or assign the Alliance Rights to the Commercial Entity
and in the absence of such agreement, the Alliance Rights will be exclusively
licensed to the Commercial Entity.
Subject to Article X, neither Party will have the right to make, use or
sell products or processes covered by the Alliance Rights nor sublicense the
Alliance Rights within or outside the Silicon Biotechnology Field without the
prior written agreement of the other
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Party; provided, however, that each Alliance Partner is hereby granted the right
but not the obligation to obtain [...***...]. If a Party desires to obtain such
a [...***...] for use [...***...] Silicon Biotechnology Field the Party so
desiring the license (the "Requesting Party") should provide written notice to
the non-requesting party. Upon receipt of such notice, the Parties shall
negotiate in good faith the terms and conditions of said license, including for
example whether it is [...***...] and the [...***...]. In the absence of
agreement on reasonable terms of said license within ninety (90) days from
notice by the Requesting Party shall be granted a license on default terms as
follows, [...***...]. The appropriate [...***...] will be negotiated by the
Parties taking into consideration such factors as [...***...].
4.6 RECOMMENDATIONS ON [...***...] ALLIANCE RIGHTS. The Steering Committee may
make recommendations to the Parties regarding exploitation of the Alliance
Rights within the Silicon Biotechnology Field [...***...].
4.7 PREPARATION / PROSECUTION OF PATENT APPLICATIONS. All reasonable costs
(excluding internal time and costs) associated with the preparation, filing,
prosecution and maintenance of any patent applications or patents covering
Alliance Rights shall be [...***...]. The Parties through the Steering Committee
will agree whether DCC, GCOR or a jointly agreed upon outside counsel will
prepare, file and prosecute any given patent application taking into
consideration the nature of the invention and the expertise of the Parties
relating to the invention. The Parties shall cooperate in the preparation and
filing of any patent applications, including sharing copies of such intended
filings with adequate time for review and comment by the other Party and the
parties shall have the opportunity to review and comment on substantive matters
with respect to the preparation, filing and prosecution of any Alliance Rights.
4.8 ACQUISITION OF THIRD PARTY INTELLECTUAL PROPERTY. The Parties through the
Steering Committee will mutually agree how and whether to license any
intellectual property owned or controlled by Third Parties which may be
necessary to meet the objectives of the R&D Program of this Agreement.
4.9 NO IMPLIED LICENSE OR RIGHT. No license or right is granted by implication
or otherwise with respect to any patent application or patent except as
specifically set forth herein.
4.10 INFRINGEMENT OF THIRD PARTY PATENTS BY THE PARTIES. Should either Party
become aware of any patent that would be infringed by the Research or
Development Activities undertaken in the R&D Program, or be sued for
infringement thereof, that Party shall notify the other Party promptly in
writing. The Parties shall promptly discuss and decide the best way to xxxxx
such potential infringement or defend such action, proceeding or suit.
4.11 INFRINGEMENT OF PATENT RIGHTS BY THIRD PARTIES. [...***...], in the event
of any infringement of any such Alliance Rights, the Parties will promptly
discuss and decide how to enforce such Alliance Rights against an alleged Third
Party infringer. The Parties will cooperate in any action taken to enforce the
Alliance Rights and will reach agreement on various issues relating to any such
enforcement action including, but not limited to, determining which Party will
lead such enforcement action, and any settlement discussions, cost sharing and
award sharing (if any).
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ARTICLE V
CONFIDENTIALITY
5.1 CONFIDENTIAL INFORMATION. In consideration of disclosure by either of the
Parties to the other Party of confidential information in written or oral form
or in the form of samples, the recipient and the recipient's Affiliates
undertake for a period of [...***...] years from the termination or expiration
of the R&D Program Term to treat received information as strictly confidential
and therefore not to disclose it to any Third Party (except reliable employees
and Affiliates and sublicensees under similar secrecy obligations), and to make
no commercial use of it except for the purposes of this Agreement or except as
otherwise specifically provided for herein. This obligation does not apply to:
(a) information which, at the time of disclosure, is already in the
public domain;
(b) information which, after disclosure, becomes a part of the public
domain by publication through no violation of this Agreement;
(c) information which the recipient is able to prove by competent
written evidence to have been in the recipient's possession prior to
any disclosure by the disclosing Party;
(d) information which is hereafter lawfully disclosed by a third party
to the recipient, which third party did not acquire the information
under a still effective obligation of confidentiality to the disclosing
Party; and
(e) information which is independently developed by or for a Party
outside the Silicon Biotechnology Field.
5.2 PRESS RELEASE. The Parties will endeavor to issue a joint press release
after execution of this Agreement. Neither Party shall issue any other public
statement concerning the existence or terms of this Agreement or any activities
related hereto without consulting and agreeing with the other Party. However,
each Party may disclose this Agreement or any activities related hereto without
the other Party's approval if such approval has been requested but not received
within forty-eight (48) hours and such party concludes, after consulting with
its legal advisors, that it is required by law or regulatory or listing agency
to disclose the transaction or part thereof.
ARTICLE VI
REPRESENTATIONS AND WARRANTIES
6.1 BY DCC. DCC represents and warrants to GCOR that:
(a) CORPORATE POWER. As of the Effective Date, DCC is duly organized
and validly existing under the laws of the State of Michigan and has
full corporate power and authority to enter into this Agreement and
carry out the provisions hereof;
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(b) DUE AUTHORIZATION. As of the Effective Date, DCC is duly authorized
to execute and deliver this Agreement and to perform its obligations
hereunder. The person executing this Agreement on DCC's behalf has been
duly authorized to do so by all requisite corporate action;
(c) BINDING AGREEMENT. This Agreement is a legal and valid obligation
binding upon DCC and enforceable in accordance with its terms. As of
the Effective Date, the execution, delivery and performance of this
Agreement by DCC does not to the best of its knowledge conflict with
any agreement, instrument or understanding, oral or written, to which
it is a party or by which it may be bound, nor violate any material law
or regulation of any court, governmental body or administrative or
other agency having jurisdiction over it;
(d) TECHNOLOGY OWNERSHIP. DCC owns or Controls the DCC Background
Rights and has the right to grant to GCOR the [...***...] granted under
Section 4.2 hereof and that said license does not conflict with or
violate the terms of any agreement between DCC and any Third Party;
(e) PRIOR AGREEMENT. Except as set forth on Exhibit C, as of the
Effective Date, DCC [...***...];
6.2 BY GCOR. GCOR represents and warrants to DCC that:
(a) CORPORATE POWER. As of the Effective Date, GCOR is duly organized
and validly existing under the laws of the State of Delaware and has
full corporate power and authority to enter into this Agreement and
carry out the provisions hereof;
(b) DUE AUTHORIZATION. As of the Effective Date, GCOR is duly
authorized to execute and deliver this Agreement and to perform its
obligations hereunder. The person executing this Agreement on GCOR's
behalf has been duly authorized to do so by all requisite corporate
action;
(c) BINDING AGREEMENT. This Agreement is a legal and valid obligation
binding upon GCOR and enforceable in accordance with its terms. As of
the Effective Date, the execution, delivery and performance of this
Agreement by GCOR does not to the best of its knowledge conflict with
any agreement, instrument or understanding, oral or written, to which
it is a party or by which it may be bound, nor violate any material law
or regulation of any court, governmental body or administrative or
other agency having jurisdiction over it;
(d) TECHNOLOGY OWNERSHIP. GCOR owns or Controls the GCOR Background
Rights and has the right to grant to DCC [...***...] granted under
Section 4.2 hereof and that said license does not conflict with or
violate the terms of any agreement between GCOR and any Third Party;
and
(e) PRIOR AGREEMENT. Except as set forth on Exhibit B, as of the
Effective Date, GCOR [...***...].
6.3 DISCLAIMER. NEITHER PARTY GUARANTEES THE SAFETY OR USEFULNESS OF ANY
PRODUCT. EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT
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NEITHER PARTY MAKES ANY REPRESENTATION OR WARRANTY TO THE OTHER PARTY OF ANY
NATURE, EXPRESS OR IMPLIED, INCLUDING, WITHOUT LIMITATION, ANY WARRANTY OF
NONINFRINGEMENT, MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
ARTICLE VII
INDEMNIFICATION
7.1 BY DCC. DCC shall defend, indemnify and hold GCOR harmless against any
liability, damage, loss, cost or expense, including legal fees arising out of or
resulting from: (i) DCC's breach of a material term of this Agreement; and (ii)
DCC's breach of any representation or warranty set forth in Section 6.1.
7.2 BY GCOR. GCOR shall defend, indemnify and hold DCC harmless against any
liability, damage, loss, cost or expense, including legal fees arising out of or
resulting from: (i) GCOR's breach of a material term of this Agreement; and (ii)
GCOR's breach of a representation or warranty set forth in Section 6.2.
7.3 NOTICE AND COOPERATION. If either party hereunder receives notice of
any claim or of the commencement of any action, administrative or legal
proceeding, or investigation as to which the indemnity provided for in Article
VII hereof may apply:
(a) The party seeking indemnification shall notify the indemnifying
party of such fact within 14 days at the address noted in Section 11.7;
provided that the failure to so notify shall not release an
indemnifying party of its obligation hereunder unless such failure
shall be materially detrimental to the defense of any such action,
proceeding or investigation; and
(b) The party seeking indemnification shall cooperate with and assist
the indemnifying party and its representatives in the investigation and
defense of any claim and/or suit for which indemnification is provided.
7.4 DEFENSE AND SETTLEMENT. The indemnifying party shall control the
defense of any claim and/or suit for which indemnification is provided under
this Article VII. This agreement of indemnity shall not be valid as to any
settlement of a claim or suit or offer of settlement or compromise without the
prior written approval of the indemnifying party.
ARTICLE VIII
COMMERCIALIZATION
8.1 COMMERCIAL PHASE. Prior to commercialization of a product developed by
the Alliance, the Parties will determine the appropriate mechanism for
commercialization taking into consideration business, technical, legal, tax and
financial matters with a guiding principle that the Parties will share equally
in the value created by the Alliance through a joint venture corporation or
partnership (the "Commercial Entity"). The Parties [...***...] that the
Commercial Entity will be owned [...***...] by GCOR and [...***...] by DCC
under the assumption that the Parties' [...***...]; provided, however,
[...***...], the provisions of Section 8.3 hereof will govern. The decision by
the Parties regarding whether to form the Commercial Entity will be triggered
[...***...]. It is anticipated that the
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formation of the Commercial Entity will occur within [...***...] from the
Effective Date of this Agreement. However, if at the end of the [...***...] the
Commercial Entity has not been formed and this Agreement has not been
terminated, the Parties will agree on an appropriate mechanism to continue
funding of the research and development of products and processes in the Silicon
Biotechnology Field through the Alliance.
8.2 BUSINESS-TO-BUSINESS PRODUCT OPPORTUNITIES. Notwithstanding the
possibility of the Commercial Entity, the Parties recognize that multiple
product opportunities and businesses may arise from the Alliance and
[...***...]. At any time during the existence of the Alliance, the Parties
should discuss and agree on the appropriate vehicle(s) for addressing product
opportunities that arise from the Alliance on a case-by-case basis.
8.3 [...***...] MECHANISM. Based on the current understanding of
[...***...]. At the expiration of the Research Phase and prior to commencement
of the Commercial Phase and the formation of the Commercial Entity, the Parties
will determine [...***...]. Contributions by either Party that are intended to
be included for purposes of this Section 8.3 are [...***...].
At such time the Parties may [...***...] in the Commercial Entity by
each Party, respectively. Alternatively, the Parties may consider other
mechanisms to account [...***...], including but not limited to, [...***...].
These and other alternatives may be considered by the Parties and their tax,
accounting, and legal advisors, taking into consideration the facts and
circumstances applicable to the Parties at the time.
ARTICLE IX
SCIENTIST EXCHANGE
9.1 As part of the R&D Program, the Parties may request to have employees
of either Party visit the other Party as visiting scientists in order to work on
the R&D Program. In accordance with a request received by a Party (the
"Requesting Party") the other Party (the "Hosting Party") will make all
reasonable efforts to accommodate any such reasonable request. All costs for
such visiting scientists will be borne by the Requesting Party.
A visiting scientist may be present and perform research activities in
Hosting Parties' facilities AT HIS/HER OWN RISK. In no event shall the Hosting
Party be held liable for any injury, harm, or death incurred by a visiting
scientist.
Any research, development, discovery, or invention performed or made by
a visiting scientist during the term of his/her visiting scientist role,
including any patent or other intellectual property rights relating thereto,
shall be owned in accordance with Article IV of this Agreement.
If, in the course of a visiting scientist role hereunder, a visiting
scientist receives proprietary information of GCOR or DCC relating to research,
development, business operations, equipment or products of either Party, such
information shall be subject to Article V hereof as GCOR Confidential
Information or DCC Confidential Information, respectively, regardless of whether
its receipt is confirmed in writing.
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Nothing herein shall entitle any visiting scientist to, or render
him/her eligible to, participate in any benefits or privileges extended to GCOR
or its employees or DCC or its employees. The Parties may request any visiting
scientist to sign appropriate agreements or disclaimers as deemed necessary by
the Hosting Party
ARTICLE X
TERM AND TERMINATION
10.1 TERM OF THE AGREEMENT. This Agreement, unless terminated sooner as
provided herein shall expire at the expiration or termination of the R&D
Program Term.
10.2 TERM OF THE R&D PROGRAM. The R&D Program shall begin on the Effective
Date and continue for a term of two (2) years (the "Initial Term") which term
will extend on a [...***...] by mutual agreement of the Parties (the "Extended
Term").
10.3 MATERIAL BREACH. In the event that either Party breaches any material
provision of this Agreement, the non-breaching Party upon sixty (60) days'
written notice to the breaching Party may terminate this Agreement. However, if
such breach is corrected within the sixty (60) day period and there are no
unreimbursed damages resulting from the breach, the Agreement shall continue in
force.
10.4 TERMINATION BY DCC. DCC may terminate the R&D Program and this
Agreement by providing sixty (60) day prior written notice to GCOR at the end
of the Initial Term or at the [...***...] during the Extended Term.
10.5 TERMINATION BY GCOR. GCOR may terminate the R&D Program and this
Agreement by providing sixty (60) day prior written notice to DCC at the end of
the Initial Term or at the [...***...] during the Extended Term.
10.6 MUTUAL TERMINATION. The Parties m ay mutually agree to terminate the
R&D Program and the Agreement at the end of the Initial Term or anytime during
the Extended Term.
10.7 EFFECT OF TERMINATION.
(a) TERMINATION BY DCC.
(i) If DCC terminates the R&D Program and this Agreement,
pursuant to Section 10.3, then [...***...].
(ii) If DCC terminates the R&D Program and this Agreement
pursuant to Section 10.4 [...***...], then the
[...***...] up license granted by DCC to GCOR in DCC
Background Rights for use in the research, development
and commercialization of products and processes in the
Silicon Biotechnology Field pursuant to Section 4.3
[...***...] as follows.
a. Said license [...***...] up to a cap [...***...]
after termination (the "Amended License"). The
royalty will be agreed to by the Parties taking
into consideration the relative contribution of
the [...***...] to the commercial product, and
such other factors as are reasonably considered in
similar transactions.
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b. The Amended License shall continue for a period of
[...***...] from the date of termination.
Additionally, the [...***...] license granted by GCOR to DCC
in GCOR Background Rights for use in the research, development
and commercialization of products and processes in the Silicon
Biotechnology Field pursuant to Section 4.2 [...***...]. The
Parties will continue to own all Alliance Rights [...***...].
(b) TERMINATION BY GCOR.
(i) If GCOR terminates the R&D Program and this Agreement,
pursuant to Section 10.3, then DCC's license in GCOR's
Background Rights [...***...].
(ii) If GCOR terminates the R&D Program and this Agreement
pursuant to Section 10.5 and prior to the formation of
the Commercial Entity, then the [...***...] license
granted by GCOR to DCC in GCOR Background Rights for use
in the research, development and commercialization of
products in the Silicon Biotechnology Field pursuant to
Section 4.2 will continue for a period of [...***...]
from the date of termination.
Additionally, the [...***...] license granted by DCC to GCOR
in DCC Background Rights for use in the research, development
and commercialization of products in the Silicon Biotechnology
Field pursuant to Section 4.3 [...***...]. [...***...] of
products or processes made, used or sold employing the
Alliance Rights. The [...***...] taking into consideration the
relative contribution of the Alliance Rights to the commercial
product and such other factors as are reasonably considered in
similar transaction.
Additionally, [...***...] from entering a relationship with a
Third Party in the Silicon Biotechnology Field for a period of
[...***...] from the date of termination.
(c) MUTUAL TERMINATION. In the event the Alliance Partners
mutually agree to terminate the R&D Program and this Agreement
pursuant to Section 10.6 [...***...], the [...***...] up
license granted by each Party to the other Party in its
respective Background Rights will be amended to provide that
the license [...***...]. This amended license will continue
for a period of [...***...] from the date of termination. The
Parties will continue to [...***...].
Additionally, [...***...] from entering a relationship with
a Third Party in the Silicon Biotechnology Field for a period
of [...***...] from the date of mutual termination.
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ARTICLE XI
MISCELLANEOUS
11.1 FORCE MAJEURE. Each of the Parties hereto shall be excused from the
performance of its obligations hereunder and shall not be liable for damages to
the other in the event that such performance is prevented by circumstances
beyond its effective control. Such excuse from performance shall continue for as
long as the condition responsible for such excuse continues and for a period of
thirty (30) days thereafter, provided that if such excuse continues for a period
of one hundred and eighty (180) days, the Party whose performance is not being
prevented shall be entitled to withdraw from this Agreement. For the purpose of
this Agreement circumstances beyond the effective control of the Party which
excuse said Party from performance shall include, without limitation, acts of
God, enactments, regulations or laws of any government, injunctions or judgment
of any court, war, civil commotion, destruction of facility or materials by
fire, earthquake, storm or other casualty, labor disturbances and failure of
public utilities or common carrier.
11.2 INDEPENDENT CONTRACTORS. Nothing in this Agreement is intended or shall be
deemed to constitute a partnership, agency, employment or joint venture
relationship between the Parties. All activities by the Parties hereunder shall
be performed by the Parties as independent parties. Neither Party shall incur
any debts or make any commitment for or on behalf of the other Party except to
the extent, if at all, specifically provided herein or subsequently agreed upon.
11.3 LIMITATION ON ASSIGNMENT. Except as provided herein, neither Party may
assign this Agreement nor any interest or obligation hereunder except with the
prior written consent of the other, which consent shall not be unreasonably or
untimely withheld. Either Party may assign this Agreement in connection with the
sale or transfer of all or substantially all of its business to which this
Agreement relates. Any permitted assignee shall assume all of the obligations of
its assignor under this Agreement.
11.4 AMENDMENTS OF AGREEMENT. This Agreement may be amended or modified or one
or more provisions hereof waived only by a written instrument signed by both
Parties.
11.5 SEVERABILITY. In the event that any one or more of the provisions of this
Agreement should for any reason be held by any court or authority having
jurisdiction over this Agreement and the Parties to be invalid, illegal or
unenforceable, such provisions shall be deleted in such jurisdiction; elsewhere
this Agreement shall not be affected.
11.6 ARTICLE HEADINGS. The section headings contained in this Agreement are for
convenience only and are to be of no force or effect in construing and
interpreting this Agreement.
11.7 NOTICES. Any notice, report, request, approval, payment, consent or other
communication required or permitted to be given under this Agreement shall be in
writing and shall for all purposes be deemed to be fully given and received, if
delivered in person or sent by registered mail, postage prepaid or by facsimile
transmission to the respective parties at the following addresses:
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If to DCC: Dow Corning Corporation
0000 X. Xxxxxxxx Xxxx
X.X. Xxx 000
Xxxxxxx, Xxxxxxxx 00000-0000
Telefax: 000-000-0000
Attention: [...***...]
Business Manager
If to GCOR: Genencor International, Inc.
000 Xxxx Xxxx Xxxx
Xxxx Xxxx, XX 00000
Telefax: 000-000-0000
Attention: General Counsel
Either Party may change its address for the purpose of this Agreement by giving
the other Party written notice of its new address.
11.8 NON-WAIVER FOR FAILURE TO ENFORCE COMPLIANCE. The express or implied waiver
by either Party of a breach of any provision of this Agreement shall not
constitute a continuing waiver of other breaches of the same or other provisions
of this Agreement.
11.9 APPLICABLE LAW. This Agreement shall be construed and interpreted in
accordance with the laws of the State of Delaware.
11.10 AUTHORITY TO SIGN; COUNTERPARTS. Each person signing below and each Party
on whose behalf such person executes this Agreement warrants that he, she or it
as the case may be, has the authority to enter into this Agreement. This
Agreement may be executed in one or more counterparts, each of which is an
original but all of which, taken together, shall constitute one and the same
instrument.
ARTICLE XII
PROVISION OF BIOLOGICAL MATERIALS
12.1 MATERIAL TRANSFER. Biological Material made available to a party
("Receiving Party") by the other party ("Delivering Party") is made available
for research purposes within the R&D Program only and shall not be used for any
other purpose without the prior written consent of the Delivering Party.
Biological Material provided hereunder will not be used for experiments in which
human beings are subjected to the Biological Material, nor for research purposes
other than the R&D Program, for Third Parties, nor will Biological Material be
transferred to any party outside the Receiving Party without the prior written
consent of the Delivering Party. The Receiving Party obtains no rights or
license in the transferred Biological Material nor may the Receiving Party file
any patent applications claiming such Biological Material. The Receiving Party
will handle such Biological Material in compliance with all laws, regulations
and guidelines applicable to the Biological Material and its use. The Biological
Material is experimental in nature, and is provided AS IS without any warranties
with respect to performance or fitness for particular purpose, or to
completeness and accuracy of information accompanying the Biological Material.
The Receiving Party acknowledges that the Biological Material is provided AS IS
and without any representation or warranty, express or implied unless otherwise
agreed by the Parties.
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IN WITNESS WHEREOF, this Research Agreement has been entered
into on the last date signed by the Parties below.
DOW CORNING CORPORATION
Date: 10/4/01 By: /s/ Xxxxx X. Xxxxx
-------------------- -------------------------------------
Name: Xxxxx X. Xxxxx
-----------------------------------
Title: Executive Director, Science and
Technology
GENENCOR INTERNATIONAL, INC.
Date: 10/4/01 By: /s/ Xxxxxx X. Xxxxxx
-------------------- --------------------------------------
Name: Xxxxxx X. Xxxxxx
--------------------------------------
Title: Group Vice President, Bioproducts
-------------------------------------
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EXHIBIT A
[...***...]
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EXHIBIT B
Section 2.1 GCOR pre-existing relationships:
[...***...]
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EXHIBIT C
Section 2.1 DCC pre-existing relationships:
to be added by addendum
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EXHIBIT D
[...***...]
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EXHIBIT E
GCOR Listed Rights
to be added by addendum
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EXHIBIT F
DCC Listed Rights
to be added by addendum
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