Exhibit 10.14
REV. 12/01
Effective January 1, 2002
AMENDMENT THREE TO LICENSE AND SUPPLY AGREEMENT
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This Amendment Three to the License and Supply Agreement ("Amendment") is
made effective as of January 1, 2002 ("Effective Date") by and between Symyx
Technologies, Inc., a Delaware corporation, having a place of business at 0000
Xxxxxxx Xxxxxxxxxx, Xxxxx Xxxxx, XX ("Symyx"), and Argonaut Technologies, Inc.,
a Delaware corporation having a place of business at 0000 Xxxxx Xxxxx, Xxxxxx
Xxxx, XX, 00000 ("Argonaut").
WHEREAS, Symyx and Argonaut entered into a license and Supply Agreement
dated August 6, 1999, which was amended on May 2, 2000, and June 28, 2001 (the
"L&S Agreement"), by which the parties agreed to license, develop and sell
Products (as defined in the L&S Agreement); and Symyx and Argonaut desire to
further amend the L&S Agreement.
NOW, THEREFORE, in consideration of the mutual covenants and promises
contained in the L&S Agreement, Symyx and Argonaut hereby agree to modify the
L&S Agreement as follows:
1. The following Section 6.7 shall be inserted after Section 6.6:
6.7 Minimum Royalties. Notwithstanding Section 6.1, Argonaut agrees
to pay at least the following minimum royalties for the licenses and
other rights granted herein ("Minimum Royalty"). For the calendar
year 2002, the Minimum Royalty shall be six hundred thousand dollars
($600,000), for the calendar year 2003, the Minimum Royalty shall be
six hundred fifty thousand dollars ($650,000), for the calendar year
2004, the Minimum Royalty shall be four hundred fifty thousand
dollars ($450,000). The Minimum Royalty shall be the minimum amount
Argonaut shall be required to pay Symyx in total royalties for each
respective calendar year pursuant to this Article 6. Minimum
Royalties shall be payable on a quarterly basis. For calendar year
2002, the Minimum Royalty shall be payable as follows:
2002 Amount
First Quarter $132,000
Second Quarter $132,000
Third Quarter $146,000
Fourth Quarter $190,000
For subsequent years of the Term, Minimum Royalties payable each
quarter shall be determined in the following manner: Argonaut shall
prepare a bona fide annual sales forecast for the upcoming year no
later than December 1 of the preceding year, which forecast shall be
consistent
with its sales and revenue forecast produced for internal budget
and planning purposes, and shall provide such forecast to Symyx
along with a proposed quarterly payment schedule for the Minimum
Royalty for that year. The proposed quarterly payment schedule
shall reflect quarterly payments bearing the same proportion to
the Minimum Royalty as the sales forecasts for such quarter bears
to the annual sales forecast, provided that each quarterly payment
shall be no less than fifteen percent (15%) of the Minimum Royalty
for that calendar year.
Should the total royalties paid or due to Symyx by Argonaut under
Section 6.1 for any calendar quarter be less than the Minimum
Royalty payments under the payment schedule for that calendar
quarter, Argonaut agrees to pay such difference to Symyx within
sixty (60) days of the end of that calendar quarter. If at any
point during the calendar year, the actual royalties due to Symyx
by Argonaut for that calendar year exceeds the Minimum Royalty for
that calendar year, Argonaut shall not be required to pay any
further Minimum Royalties for such year, provided, however, that
Argonaut shall still be liable for all royalties actually incurred
pursuant to Section 6.1.
2. Section 11.1. shall be deleted and replaced by the following section:
11.1 Term. This Agreement shall be in force for a period of three
(3) years from the Effective Date of Amendment Three, unless
terminated earlier as provided in Article 11, (such period, the
"Term").
3. Section 13.11 shall be updated to reflect Argonaut's new address of
0000 Xxxxx Xxxxx, Xxxxxx Xxxx, XX, 00000, Att: CEO & President.
4. Exhibit D (Rev. 4-00) and Exhibit F (Rev. 6-01) shall be replaced and
superceded Exhibit D (Rev. 11-01) and Exhibit F (Rev. 11-01), attached
hereto.
IN WITNESS WHEREOF, the parties hereto have caused their duly authorized
representatives to execute this Amendment.
ARGONAUT TECHNOLOGIES, INC. SYMYX TECHNOLOGIES, INC.
/s/ Xxxxx Xxxxxxxxxxx /s/ Xxxxxx Xxxxxx
By:---------------------------- By:----------------------------
Xxxxx Xxxxxxxxxxx Xxxxxx Xxxxxx
Name: ------------------------- Name:--------------------------
Pres/CEO CEO
Title:------------------------- Title:-------------------------
12/13/01 12/13/01
Date:-------------------------- Date:--------------------------
EXHIBIT D
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PATENT RIGHTS
Primary
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US 6,306,658 (based on US Ser. No. 09/211,982)
PCT Xxx. Appl. No. WO 00/09/09255
US Ser. No. 09/177,170
US Ser. NO. 09/417,125
US Ser. No. 09/239,223
ANCILLARY
US 5,985,356
US 6,004,617
US 6,030,917
US 6,248,540
EP 978499
EP 985678
EP 983983
EXHIBIT F
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Buyers' License
ENDEAVOR(TM) PATENT LICENSE: Seller is selling the Instrument (defined below) to
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Buyer under license from Symyx Technologies, Inc., Santa Clara, CA ("Symyx"),
the owner of certain Licensed Patents (defined below), and Seller desires to
grant to Buyer an express, limited license on the following terms and effective
upon the date of delivery of the Instrument (the "Effective Date"):
a)Definitions. "Instrument" shall mean the Endeavor(TM) instrument as sold
by Seller to Buyer, without modification or enhancement affecting the functional
performance capabilities thereof, without software integration with other
instruments or systems, and without physical integration with other instruments
or systems affecting the functional performance capabilities of the Endeavor
instrument. "Licensed Patents" shall mean U.S. Patent No. 6,306,658 as well as
U.S. and foreign patents issuing from the following patent applications: WO
OO/09255; US 09/177,170; IS 09/417,125; US 09/239,223; applications claiming
priority to one or more of the foregoing; and other patent applications or
patents designated in writing from time to time by Seller. "Ancillary Patents"
shall mean the following U.S. patents and corresponding foreign patents thereof:
US 5,985,356; US 6,004,617; US 6,030,917; US 6,248,540; and EP 978499; EP
985678; and EP 983983, and other patents designated in writing from time to time
by Seller. "Buyer" shall mean the bona fide purchaser for value of an Instrument
from Seller. "Term" shall mean the period extending from the Effective Date to
the date of expiration of the last-to-expire of the Licensed Patents.
b)Grant. During the Term, Seller hereby grants to Buyer a limited,
non-exclusive, worldwide, paid-up license under the Licensed Patents and the
Ancillary Patents solely to use the Instrument, including the preparation of
materials solely for use in the Instrument.
c)Reserved Rights. Buyer shall have only those rights expressly granted in
subparagraph (b) hereof; all other intellectual property rights related to the
manufacture, use or sale of the Instrument, together with related improvements,
are expressly reserved to Seller or Symyx.
