Exhibit 10.4
SOLE PATENT LICENSE AGREEMENT
THIS AGREEMENT is made and entered into this 26th day of January, 1996,
by and between BIONOVA U.S. INC., a Delaware corporation (hereinafter BIONOVA)
and DNA PLANT TECHNOLOGY, a Delaware corporation (hereinafter DNAP).
WITNESSETH
WHEREAS, BIONOVA, pursuant to the Loan Agreement dated as of even date
herewith ("Loan Agreement"), as the Lender, has agreed, subject to certain
conditions, to lend to DNAP, as the Borrower, $10,000,000 on a term loan
basis;
WHEREAS, BIONOVA is willing to make the term loan under the Loan
Agreement only upon the condition, inter alia, that DNAP shall have executed
and delivered to BIONOVA an Assignment dated as of even date herewith of
patents and patent applications listed on the attached Schedule I;
WHEREAS, immediately prior to the execution of such Assignment, DNAP and
BIONOVA executed a Non-Exclusive Patent License Agreement (the "NON-EXCLUSIVE
LICENSE"), which the parties hereto acknowledge continues through and beyond
the term of this Agreement, unless such Non-Exclusive Patent License Agreement
is earlier terminated pursuant to its terms.
WHEREAS, BIONOVA, pursuant to the Loan Agreement and the Assignment, is
the owner of the right, title and interest in and to the patents and patent
applications listed on the attached Schedule I;
WHEREAS, DNAP desires to obtain a sole license under the patents and
patent applications listed on the attached Schedule I;
WHEREAS, BIONOVA is willing to grant such sole license to DNAP, for the
time and subject to the terms and conditions hereinafter set forth.
NOW THEREFORE, for and in consideration of the mutual promises contained
herein, and for other good and valuable consideration, the parties hereto
agree as follows:
1. Definitions. In this Agreement, the following terms shall have
the following meanings:
a. LICENSED PATENTS shall mean the patents and patent
applications listed on the attached Schedule I, patents to
be issued pursuant thereto, and all divisions,
continuations, reissues, reexamination certificates,
substitutes, and extensions thereof.
b. LICENSED PRODUCTS shall mean any product or process covered
by one or more claims of the Licensed Patents.
c. COMMERCIALIZATION COLLABORATORS shall mean only those
entities who, from the Closing Date until the time of a
termination under this License Agreement, are in the chain
of commercialization of the products made, used or sold by
DNAP or by Affiliates of the DNAP.
d. RESEARCH SPONSORS shall mean those entities (other than
entities listed on Schedule II with respect only to the
Existing Licenses and extensions thereof) who, from the date
hereof until the time of termination of this License
Agreement shall fund research activities of DNAP or
Affiliates of DNAP under agreements requiring funding to
DNAP of at least $350,000 over a period not to exceed three
years.
e. EXISTING LICENSES shall mean those license agreements with
respect to the LICENSED PATENTS that are set forth in
Schedule II hereto.
f. AFFILIATES means persons or entities controlling, controlled
by or under common control with the party, as well as any
majority owned entities of the party and of its other
affiliates. "Control" of an entity means either the power,
directly or indirectly, to direct or cause the direction of
the management and policies of the entity, whether by
contract or otherwise, or the right to receive at least 50%
of the profits from such entity.
2. License Grant to DNAP.
a. Upon execution of this Agreement and until termination of
DNAP's rights to compel a reconveyance of the LICENSED PATENTS pursuant to
Section 6.03 of the Loan Agreement, only for the Term indicated in Section
5(a) hereof, and subject to the NON-EXCLUSIVE LICENSE, BIONOVA hereby grants
to DNAP and its Affiliates a fully paid up royalty free sole license under the
LICENSED PATENTS to (i) use the LICENSED PATENTS, (ii) together with its
COMMERCIALIZATION COLLABORATORS, to make, have made, use and sell throughout
the world all LICENSED PRODUCTS, and (iii) to meet its obligations under the
Existing Licenses.
b. Upon termination of DNAP's rights to compel a reconveyance
of the LICENSED PATENTS pursuant to Section 6.03 of the Loan Agreement, and
for the Term indicated in Section 5(b) hereof and subject to the NON-EXCLUSIVE
LICENSE, BIONOVA hereby grants to DNAP and its Affiliates a fully paid up,
royalty free, non-exclusive license under the LICENSED PATENTS to (i) use the
LICENSED PATENTS, (ii) together with its COMMERCIALIZATION COLLABORATORS, to
make, have made, use and sell throughout the world all LICENSED PRODUCTS, and
(iii) to meet its obligations under the Existing Licenses.
3. DNAP's Right to Sublicense. Except as specifically set forth
herein, during the term of this Agreement, DNAP shall not have a right to
sublicense the LICENSED PATENTS under this Agreement. BIONOVA shall be deemed
to have consented to the EXISTING LICENSES and the NON-EXCLUSIVE LICENSE (and
to DNAP's continuing ability to receive all royalties and license fees
thereunder). DNAP shall have the right to sublicense the LICENSED PATENTS to
RESEARCH SPONSORS at a commercially reasonable royalty rate acceptable to DNAP
whereby 50% of such royalties received by DNAP shall be paid, only if and to
the extent that there is any outstanding "Loan Indebtedness," as that term is
defined in the Loan Agreement, to BIONOVA within thirty (30) days of receipt
by DNAP and applied to such "Loan Indebtedness," and provided that the scope
of any such sublicense shall be (i) a non-exclusive license, and (ii) strictly
limited to the development and commercialization of the products and processes
resulting from the funded research program (collectively, the "Permitted
Sublicenses"). Allocations of royalty value in agreements with RESEARCH
SPONSORS between the LICENSED PATENTS and other intellectual property or
research services to be provided by DNAP shall be commercially reasonable.
Without the written consent of BIONOVA, DNAP shall not be entitled to
materially amend or modify any such PERMITTED SUBLICENSE if such amendment or
modification would cause the sublicense to no longer meet the criteria for a
Permitted Sublicense. Without the written consent of BIONOVA, DNAP shall not
be entitled to materially amend or modify any of the EXISTING LICENSES, if
such amendment or modification would have a materially adverse affect on the
value of the LICENSED PATENTS. Subject to BIONOVA executing a Confidentiality
Agreement, DNAP agrees to send BIONOVA a complete and executed copy of each
PERMITTED SUBLICENSE or any modification of such PERMITTED SUBLICENSE or any
of the EXISTING LICENSES modified hereunder within 10 days of the final
execution or modification.
4. Limitation of Rights of BIONOVA. While the sole license is in
effect, and other than pursuant to the NON-EXCLUSIVE LICENSE, BIONOVA shall
have no rights, without the prior written consent of DNAP (i) to grant any
licenses of the LICENSED PATENTS; or (ii) to make any use on its own behalf of
the LICENSED PATENTS including without limitation the right to make, have
made, use and sell throughout the world all LICENSED PRODUCTS.
5. Term.
a. The term of the sole license granted to DNAP in section 2(a)
shall be the earlier of three years from the date of execution hereof or until
termination of DNAP's right to compel a reconveyance of the LICENSED PATENTS
pursuant to Section 6.03 of the Loan Agreement.
b. The term of the non-exclusive license granted to DNAP in
section 2(b) shall be until expiration of the last to expire of the LICENSED
PATENTS.
6. Enforcement of LICENSED PATENTS. As long as its sole license
remains in effect pursuant to Section 2(a) and subsequent to that time for the
sole purpose of meeting its obligations under the EXISTING LICENSES and the
PERMITTED SUBLICENSES, DNAP shall retain all rights to commence, appear in, or
defend or make decisions concerning any action or proceeding (including any
proceeding or prosecution in the United States Patent and Trademark Office)
including the right to compel the joinder of BIONOVA as a party, purporting to
affect, the LICENSED PATENTS. If BIONOVA requests that DNAP take any action
regarding the matters set forth in this Section 6 and DNAP refuses or fails to
take such action on a timely basis, then, while the sole license remains in
effect, BIONOVA may (but shall not be obligated to) commence, appear in, or
defend any action or proceeding (including any proceeding in the United States
Patent and Trademark Office) purporting to affect the LICENSED PATENTS or the
respective rights and obligations of BIONOVA and DNAP with respect thereto.
In the event DNAP refuses or fails to take action on a timely basis reasonably
requested by BIONOVA, then BIONOVA shall, at its sole option and expense,
control any such action or proceeding and DNAP agrees to appear as a party
therein if requested by BIONOVA, and to cooperate with BIONOVA in the conduct
of such action or proceeding whether or not it is a party. BIONOVA may (but
shall not be obligated to) pay all necessary expenses, including reasonable
attorneys' fees and expenses incurred in connection with such proceedings or
actions, which DNAP agrees to repay to BIONOVA on the terms set forth in the
Loan Agreement.
7. Notices. All notices, demands, requests, and other communications
required or permitted hereunder shall be in writing and shall be deemed to
have been given when received by BIONOVA or DNAP, as the case may be, at the
respective addresses set forth below or as BIONOVA or DNAP may from time to
time designate by written notice to the other.
BIONOVA U.S. INC.
c/o Thompson & Xxxxxx (attn: JAR)
1700 Pacific, Ste. 3300
Xxxxxx, Xxxxx 00000
With a copy to:
Lic. Xxxxxxxxx Xxxxxxx-Xxxxxx
Edificio Torrealta
Av. Xxxxx 300 Mezzzanine
66265 Xxxxx Xxxxxx, N.L.
Mexico
DNA PLANT TECHNOLOGY CORPORATION
0000 Xxx Xxxxx Xxxxxx
Xxxxxxx, XX 00000-0000
Attn.: Vice President, Business Development
(with copy to DNAP Legal Department, at the same address);
8. Modifications. No provision of this LICENSE AGREEMENT may be
modified, waiver, or terminated except by instrument in writing executed by
the party against whom a modification, waiver, or termination is sought to be
enforced.
9. Severability. In case any of the provisions of this LICENSE
AGREEMENT shall for any reason be held to be invalid, illegal or
unenforceable, such invalidity, illegality, or unenforceability shall not
affect any other provision hereof, and this LICENSE AGREEMENT shall be
construed as if such invalid, illegal, or unenforceable provision had never
been contained herein.
10. Election of Remedies. Each party shall have all of the rights and
remedies granted herein and available at law or in equity, and these same
rights and remedies shall be cumulative and may be pursued separately,
successively, or concurrently against the other party, or the LICENSED PATENTS
at the sole discretion of the pursuing party. The exercise or failure to
exercise any of the same shall not constitute a waiver or release thereof or
of any other right or remedy, and the same shall be non-exclusive.
11. Form and Substance. All documents, certificates, and other items
required under this LICENSE AGREEMENT to be executed and/or delivered to a
party shall be in form and substance satisfactory to the receiving party.
12. No Third Party Beneficiary. This LICENSE AGREEMENT is for the
sole benefit of BIONOVA and DNAP and is not for the benefit of any third
party.
13. Number and Gender. Whenever used herein, the singular number
shall include the plural and the singular, and the use of any gender shall be
applicable to all genders.
14. Captions. The captions, headings, and arrangements used in this
LICENSE AGREEMENT are for convenience only and do not in any way affect,
limit, amplify, or modify the terms and provisions hereof.
15. Applicable Law. This LICENSE AGREEMENT shall be governed by and
construed in accordance with the laws of the State of California and the laws
of the United States of America.
16. Assignability. Neither this LICENSE AGREEMENT nor any interest
herein may be assigned, in whole or in part, by a party without the prior
written consent of the other party. A party may assign this LICENSE AGREEMENT
to a successor of all or substantially all of its business without the prior
written consent of the other party; provided, however, that no such assignment
shall be valid unless the assignee assumes all of the duties and obligations
of the assigning party and provided further that the assigning party shall
remain liable and responsible to the other party for the performance and
observance of all such duties and obligations.
17. General Assurances. The parties hereto agree to execute,
acknowledge and deliver all such further instruments, and to do all such other
acts, as may be necessary or appropriate in order to carry out the intent and
purposes of this LICENSE AGREEMENT.
18. Negation Of Agency And Similar Relationships. Nothing contained
herein shall be deemed to create any agency, joint venture or partnership
relationship between the parties hereto.
19. Confidentiality.
a. Duties: DNAP and its PERMITTED SUBLICENSEES shall keep
confidential and not disclose to any third person or entity any information
regarding the Licensed Patents or the Licensed Products, except as provided in
subparagraph (b) below. Notwithstanding the foregoing, DNAP and its PERMITTED
SUBLICENSEES shall be free to use such information for purposes of exercising
its rights under this Agreement.
b. Exceptions: The duties of confidentiality, access
restrictions and non-use provided by subparagraph (a) above shall not apply to
information received by DNAP from BIONOVA if the information:
(1) is public information at the time of disclosure by
BIONOVA to DNAP;
(2) subsequently becomes public information other than by
act or omission of DNAP;
(3) is already in the lawful possession of DNAP, as can
reasonably be demonstrated by documentary evidence from DNAP, at the time of
first disclosure by BIONOVA to DNAP; or
(4) is independently developed by employees of DNAP who
did not have access to the information.
20. Termination. This Agreement will terminate upon the date of the
last to expire of the LICENSED PATENTS. In the event of a material breach of
this Agreement by either party and the failure to cure such breach within 30
days of the receipt of written notice from the other party, this Agreement
shall terminate. In the event of such termination, the non-breaching party
retains all other rights and remedies available to it under law, including the
right to collect payments owed by not made.
21. Counterparts. This Agreement may be executed in one or more
counterparts, each of which will be deemed an original, but all of which will
constitute one and the same instrument.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed and delivered on the date first above written.
BIONOVA U.S. INC.
By: /s/ Xxxxxx Xxxxxxx
Name: Xxxxxx Xxxxxxx
Title: Chairman of the Board and Chief
Executive Officer
DNA PLANT TECHNOLOGY CORPORATION
By: /s/ Xxxxxx Xxxxxxxxx
Name: Xxxxxx Xxxxxxxxx
Title: Chief Executive Officer
