EXHIBIT 10.5
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CMV LICENSE AGREEMENT
This AGREEMENT is made this ____ day of ________, 1996, between Calgene II,
Inc., and Monsanto Company regarding the non-exclusive license of certain patent
rights. Based on the mutual consideration between the parties, the parties do
hereby agree as follows:
ARTICLE 1 BACKGROUND AND PARTIES
1.1 Calgene II, Inc. ("NEWCO") is a Delaware corporation, having a
principal place of business at 0000 Xxxxx Xxxxxx, Xxxxx, Xxxxxxxxxx 00000.
1.2 Monsanto Company ("MONSANTO") is a Delaware corporation, having a
principal place of business at 000 Xxxxx Xxxxxxxxx Xxxxxxxxx, Xx. Xxxxx,
Xxxxxxxx 00000.
1.3 NEWCO and MONSANTO are mutually interested in entering into a
transaction involving the licensing of certain patent and know-how rights
subject to the terms and conditions of this AGREEMENT.
ARTICLE 2 DEFINITIONS
For purposes of this AGREEMENT, the following words and phrases shall have the
following meanings:
2.1 "AFFILIATE" shall mean any company or other legal entity which
controls, or is controlled by, or is under common control with a party to this
AGREEMENT, control meaning the holding, directly or indirectly, of more than
fifty percent (50%) of (i) the capital and/or (ii) the voting rights and/or
(iii) the right to elect or appoint directors.
2.2 "AGREEMENT" shall mean this License Agreement.
2.3 "EFFECTIVE DATE OF THIS AGREEMENT" shall mean the date first above
written.
2.4 "FIELD" shall mean the cucumber mosaic coat protein gene for use in
PRODUCE PLANTS.
2.5 "PRODUCE PLANTS" shall mean fresh and processed tomatoes, berries,
mangoes, cucurbits, peppers and sweetcorn.
2.6 "NET REVENUE," as used herein, shall mean revenues actually received
by NEWCO or its AFFILIATES for the sale of
LICENSED PRODUCTS less any transportation charges, customary and reasonable
discounts (or rebates) and commissions, returns, sales or excise taxes and
duties imposed on and paid by NEWCO respect to such sale.
2.7 "LICENSED PRODUCTS" shall mean genes, vectors, PRODUCE PLANT cells,
PRODUCE PLANTS and seed thereof of PRODUCE PLANTS containing a gene which
encodes for the sense or antisense of a gene which, in the absence of a license,
would infringe at least one (1) claim of an unexpired U.S. or foreign patent
included within LICENSED PATENT RIGHTS.
2.8 "LICENSED PATENT RIGHTS" shall mean the patents and patent
applications identified in Appendix A and any continuations, continuations in
part, divisionals, or reissue or reexamination patents or applications in the
United States deriving priority from a common application with said patent
applications and any foreign counterparts thereof.
2.9 "MONSANTO KNOW HOW" shall mean all know-how and biological materials
in the FIELD related to the LICENSED PATENT RIGHTS disclosed to NEWCO at the
EFFECTIVE DATE OF THIS AGREEMENT.
2.10 "TERM OF THIS AGREEMENT" shall be for the life of the last to issue
patent in the LICENSED PATENT RIGHTS.
ARTICLE 3 CONVEYANCE OF RIGHTS
3.1 LICENSE GRANT: Subject to the terms and conditions of this AGREEMENT,
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MONSANTO hereby grants to NEWCO and AFFILIATES of NEWCO under the LICENSED
PATENT RIGHTS and MONSANTO KNOW-HOW and during the TERM OF THIS AGREEMENT a non-
exclusive, royalty-bearing, world-wide license to make and use LICENSED PRODUCTS
in the FIELD and the right to sell or sublicense others to sell PRODUCE PLANTS.
3.2 ROYALTIES: In consideration for the license and rights granted
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herein, NEWCO shall pay MONSANTO an earned royalty of six percent (6%) of NET
REVENUE.
ARTICLE 4 REPORTS, BOOKS AND RECORDS
4.1 Within thirty (30) days of the end of the calendar annual period
during which this Agreement shall be executed and delivered and within thirty
(30) days after the end of each June and December thereafter, NEWCO shall make a
written report to MONSANTO setting forth the total sales, the NET REVENUES and
the
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number of LICENSE PRODUCTS sold by NEWCO and any AFFILIATES of NEWCO. If there
are no sales, a statement to that effect shall be made by NEWCO to MONSANTO. At
the time each report is made, NEWCO shall pay to MONSANTO the royalties shown by
such report to be payable hereunder.
4.2 NEWCO shall keep Books and Records in such reasonable detail as will
permit the reports provided for in paragraph 4.1 hereof to be made and the
royalties payable by NEWCO hereunder to be determined. NEWCO further agrees to
permit such Books and Records to be inspected and audited from time to time (but
not more often than once annually) during reasonable business hours by an
independent auditor, designated by MONSANTO and approved by NEWCO, to the extent
necessary to verify the reports provided for in paragraph 4.1; provided,
however, that such auditor shall indicate to MONSANTO only whether the reports
and royalties paid are correct, and if not, the reason why not.
ARTICLE 5 CONFIDENTIALITY
5.1 CONFIDENTIAL INFORMATION: It is anticipated that it will be
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necessary, in connection with their obligations under this AGREEMENT, for NEWCO
and MONSANTO, and AFFILIATES of either party, to disclose to each other
confidential proprietary business and/or technical information ("Confidential
Information") relating to their respective businesses, products and
technologies. The Confidential Information shall include information disclosed
in writing or other tangible form, including samples of materials. If disclosed
orally, the Confidential Information shall be summarized in written form within
thirty (30) days by the disclosing party and a copy provided to the recipient.
5.2 CONFIDENTIALITY AND LIMITED USE:
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(a) With respect to all Confidential Information, both NEWCO and
MONSANTO and AFFILIATES of either party agree as follows, it being understood
that "recipient" indicates the party receiving the confidential, proprietary
information from the other "disclosing" party. Confidential Information
disclosed to the recipient shall remain the property of the disclosing party and
shall be maintained in confidence by the recipient and shall not be disclosed to
third parties by the recipient and, further, shall not be used except for
purposes contemplated in this AGREEMENT. All confidentiality and limited use
obligations with respect to the Confidential Information shall terminate five
(5) years after the termination date of this AGREEMENT.
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(b) Notwithstanding any provision to the contrary, a party may
disclose the Confidential Information of the other party: (i) in connection with
an order of a court or other government body or as otherwise required by or in
compliance with law or regulations; provided that the disclosing party provides
the other party with notice and takes reasonable measures to obtain confidential
treatment thereof; (ii) in confidence to attorneys, accountants, banks and
financial sources and their advisors; or (iii) in confidence, in connection with
a license, sublicense, or acquisition so long as, in each case, the entity to
which disclosure is made is bound to confidentiality on terms consistent with
those set forth herein.
5.3 EXCEPTIONS: The obligations of confidentiality and limited use shall
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not apply to any of the Confidential Information which
(a) is publicly available by publication or other documented means or
later becomes likewise publicly available through no act or fault of recipient;
or
(b) is already known to recipient before receipt from the disclosing
party, as demonstrated by recipient's written records; or
(c) is made known to recipient by a third party who did not obtain it
directly or indirectly from the disclosing party and who does not obligate
recipient to hold it in confidence.
Specific information should not be deemed to be within any of these exclusions
merely because it is embraced by more general information falling within these
exclusions.
5.4 DISCLOSURES TO PERSONNEL: Recipient agrees to advise those of its
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officers, directors, stockholders, employees, associates, agents, consultants,
AFFILIATES, and sublicensees who become aware of the Confidential Information,
of these confidentiality and limited use obligations and agrees, prior to any
disclosure of Confidential Information to such individuals or entities, to make
them bound by obligations of confidentiality and limited use of the same
stringency as those contained in this AGREEMENT.
5.5 RETURN OF CONFIDENTIAL INFORMATION: Upon termination of this
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AGREEMENT, originals and copies of Confidential Information in written or other
tangible form will be returned to the disclosing party by recipient or destroyed
by recipient. One
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copy of each document may be retained in the custody of the recipient's legal
counsel solely to provide a record of what disclosures were made.
5.6 CONFIDENTIAL STATUS OF AGREEMENT: The terms of this AGREEMENT shall
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be deemed to be Confidential Information and shall be dealt with according to
the confidentiality requirements of this Article 5. Both parties agree,
furthermore, that neither party will make public disclosures concerning other
specific terms of this AGREEMENT without obtaining the prior written consent of
the other party, which consent shall not be unreasonably withheld.
ARTICLE 6 REPRESENTATION AND WARRANTIES
6.1 MONSANTO represents and warrants that it has the right to make
conveyances and grants in accordance with the articles hereof. MONSANTO further
warrants that at the date this Agreement is signed by MONSANTO, MONSANTO does
not know of any U.S. patent, whether or not owned or licensed to MONSANTO, which
would be infringed by the use or sale of LICENSED PRODUCTS other than LICENSED
PATENT RIGHTS. It is expressly understood, however, that in making the
conveyances and grants under this Agreement with the exception of the foregoing
provisions of this paragraph, MONSANTO MAKES NO REPRESENTATION, EXTENDS NO
WARRANTIES, EITHER EXPRESS OR IMPLIED, AND ASSUMES NO RESPONSIBILITIES
WHATSOEVER WITH RESPECT TO:
a) THE SCOPE OR VALIDITY OF ANY PATENT WHICH MAY FALL WITHIN
LICENSED PATENT RIGHTS; OR
b) ANY USE OF LICENSED PRODUCT BEING FREE FROM INFRINGEMENT OF
PATENTS OTHER THAN THE LICENSED PATENT RIGHTS.
ARTICLE 7 TERMINATION
7.1 Except as expressly provided otherwise, this Agreement shall terminate
upon reaching the TERM OF THIS AGREEMENT.
7.2 This Agreement may be terminated by NEWCO by giving MONSANTO thirty
(30) days prior written notice of its intention to terminate.
7.3 Except as provided in paragraph 7.2, neither NEWCO nor MONSANTO may
terminate this Agreement unless the other party is in breach of this Agreement
and does not remedy such breach within thirty (30) days written notice of such
breach.
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ARTICLE 8 PATENT LITIGATION
8.1 MONSANTO shall have power to institute and prosecute at its own
discretion and expense suits for infringement of the LICENSED PATENT RIGHTS. All
expenses in such suits will be borne entirely by MONSANTO, and MONSANTO shall
retain all judgements or awards arising from these suits.
ARTICLE 9 PATENT FILINGS AND PROSECUTION
9.1 MONSANTO shall be responsible for the filing, prosecuting and
maintaining any patent application relating to LICENSED PATENT RIGHTS, including
any foreign counterpart.
9.2 NEWCO shall be entitled to review and comment upon all actions
undertaken in the prosecution of all patents and applications.
ARTICLE 10 APPLICABLE LAW
10.1 THIS AGREEMENT SHALL BE CONSTRUED, INTERPRETED, AND GOVERNED BY THE
LAWS OF THE STATE OF MISSOURI, U.S.A. WITHOUT REGARD TO CONFLICTS OF LAW
PROVISIONS.
ARTICLE 11 MISCELLANEOUS PROVISIONS
11.1 NOTICES: All notices and other communications required or permitted
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under this AGREEMENT shall be deemed to be properly given when in writing and
sent by registered or certified mail, postage prepaid or by reputable courier
service or by telefax with receipt confirmation, to the other party at the
address set forth below, or at such other address as either party may in writing
designate from time to time for these purposes.
If to NEWCO: Calgene II, Inc.
0000 Xxxxx Xxxxxx
Xxxxx, Xxxxxxxxxx 00000
Attention: President
If to MONSANTO: Monsanto Company
000 Xxxxxxxxxxxx Xxxxxxx Xxxxx
Xx. Xxxxx, Xxxxxxxx 00000
Attention: President, Ceregen
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Copy to: Monsanto Company
000 Xxxxx Xxxxxxxxx Xxxxxxxxx
Xx. Xxxxx, Xxxxxxxx 00000
Attention: Group Patent Counsel - A3SB
11.2 ASSIGNABILITY: The rights acquired herein by NEWCO are not
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assignable in whole or part (by operation of law or otherwise) to any third
party, except to a successor to NEWCO's entire business, without the prior
written consent of MONSANTO. Any successor to NEWCO's entire business shall be
deemed bound by the terms of this AGREEMENT. Any transfer, assignment or
delegation made or attempted in violation of this subparagraph shall be void and
of no effect.
11.3 OTHER LICENSES: It is MONSANTO's present intention to minimize
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licenses to others in the FIELD and to make commercially reasonable efforts to
limit licenses to others in the FIELD to those situations where it is beneficial
to MONSANTO in resolving patent issues and related business issues. However, it
shall remain solely in MONSANTO's discretion whether or not it will license
third parties who may directly compete with NEWCO. In accordance with this
AGREEMENT, the granting by MONSANTO of other non-exclusive licenses in PRODUCE
PLANTS to third parties shall be permitted.
11.4 MOST FAVORED NATIONS: If MONSANTO subsequently grants a license
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under the LICENSED PATENT RIGHTS to a third party having substantially the same
scope as the license conveyed under this AGREEMENT and having terms which are
more favorable as to earned royalty than the terms granted to NEWCO hereunder,
then MONSANTO shall advise NEWCO as to such more favorable earned royalty terms.
NEWCO shall, at its election, be entitled upon notice to MONSANTO to have this
AGREEMENT amended to substitute such earned royalty terms for the earned royalty
terms of this AGREEMENT as of the date upon which such license containing the
more favorable earned royalty terms shall have become effective.
11.5 MARKING: NEWCO agrees to reasonably endeavor to xxxx permanently and
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legibly all LICENSED PRODUCTS or LICENSED PRODUCT packages sold by NEWCO under
this AGREEMENT with such patent notice as may be permitted under Xxxxx 00,
Xxxxxx Xxxxxx Code.
1.6 SEVERABILITY: In case any one or more of the provisions contained in
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this AGREEMENT shall for any reason be held invalid, illegal or unenforceable in
any respect, such invalidity, illegality or unenforceability shall not affect
any other provisions hereof, but this AGREEMENT shall be construed as
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if such invalid or illegal or unenforceable provisions had never been contained
herein.
11.7 COUNTERPARTS: This AGREEMENT may be executed in any number of
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counterparts, each of which shall be an original with the same effect as if the
signatures thereto and hereto were upon the same instrument.
11.8 HEADINGS: Headings as to the contents of particular Articles are for
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convenience only and are in no way to be construed as part of this AGREEMENT or
as a limitation of the scope of the particular Articles to which they refer.
11.9 AGREEMENT REFERENCES: All paragraphs and subparagraphs referred to
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herein are paragraphs and subparagraphs of this AGREEMENT.
11.10 APPENDICES: The appended Appendices form an integral part of this
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AGREEMENT.
11.11 EXPORT CONTROL: Notwithstanding any other provisions of this
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AGREEMENT, NEWCO agrees to make no disclosure or use of any MONSANTO information
or MONSANTO technology furnished or made known to NEWCO pursuant to this
AGREEMENT, except in compliance with the laws and regulations of the United
States of America, including the Export Administration Regulations promulgated
by the Office of Export Administration International Trade Administration,
United States Department of Commerce; and in particular, NEWCO agrees not to
export, directly or indirectly, either
(a) the technical data furnished or made known to NEWCO pursuant to this
AGREEMENT; or
(b) the "direct product" thereof; or
(c) any commodity produced using such technical data
to any country or countries for which a validated license is required unless a
validated license is first obtained pursuant to the Export Administration
Regulations. The term "direct product" as used above, is defined to mean the
immediate product (including process and services) produced directly by the use
of the technical data.
11.12 FORCE MAJEURE:
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(a) Except for payments of money, neither of the parties shall be
liable for any default or delay in performance
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of any obligation under this AGREEMENT caused by any of the following: Act of
God, war, riot, fire, explosion, accident, flood, sabotage, compliance with
governmental requests, laws, regulations, orders or actions, national defense
requirements or any other event beyond the reasonable control of such party; or
labor trouble, strike, lockout or injunction (provided that neither of the
parties shall be required to settle a labor dispute against its own best
judgment).
(b) The party invoking this subparagraph 11.12 shall give the other
party notice and full particulars of such force majeure event by telephone,
telegram, telex or telecopier as soon as possible after the occurrence of the
cause upon which said party is relying. Telephone, telegram, telex and
telecopier notices shall be confirmed in writing by the sending party within
five (5) days.
(c) Both MONSANTO and NEWCO shall use reasonable efforts to mitigate
the effects of any force majeure on their respective part.
11.13 NEGATION OF AGENCY: It is agreed and understood by the parties
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hereto that each of NEWCO and MONSANTO, in its performance of its obligations
and responsibilities under this AGREEMENT, is an independent contractor and that
nothing herein contained shall be deemed to create an agency, partnership, joint
venture or like relationship between the parties. The manner in which each of
NEWCO and MONSANTO carries out its performance under this AGREEMENT is within
each of NEWCO'S and MONSANTO'S sole discretion and control.
11.14 FURTHER ASSURANCES: The parties hereto agree that upon reasonable
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request of the other party, each such party shall execute and deliver such
additional documents and agreements, and take such further actions, as may be
necessary in order to fulfill and give effect to the terms of this Agreement.
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IN WITNESS WHEREOF, the parties hereto have caused this AGREEMENT to be executed
and delivered as of the Effective Date.
CALGENE II, INC.
By:____________________
MONSANTO COMPANY
By:____________________
Xxxxxx X. Xxxxxx
President, Ceregen
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APPENDIX A
U.S. Serial No. 06/917,027 filed 10/9/86
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