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EXHIBIT 10.12
TECHNOLOGY TRANSFER AGREEMENT
This Agreement is effective June 30, 2000, between GENENCOR
INTERNATIONAL, INC. (together with its Affiliates, "GCOR"), a Delaware
corporation with offices at 000 Xxxxxxxx Xxxxxx Xxxxxxxxx, Xxxxxxxxx, Xxx Xxxx
00000, and THE PROCTER & XXXXXX COMPANY, (together with its Affiliates, "P&G"),
an Ohio corporation with offices at Xxx Xxxxxxx & Xxxxxx Xxxxx, Xxxxxxxxxx, Xxxx
00000.
WHEREAS, P&G has unique skills and technology specific to the
development and use of laundry and cleaning product formulations desired by
consumers and institutional users, and has the ability to manufacture and sell
such products globally;
WHEREAS, GCOR has unique skills and technology specific to the
development of enzymes and other materials obtainable from biological systems,
and has the ability to commercially supply such enzymes and other materials in
industrial quantities;
WHEREAS, the Parties have concurrent with this Agreement entered into a
Research Agreement to cooperate in an iterative program of specific research
projects, which utilize each Party's unique abilities, based upon mutually
agreed specific Success Criteria for each specific Research or Development
Project with the challenging goal of identifying new materials which can be
formulated into Laundry and Cleaning Products sold by P&G to provide Observable
Benefits;
WHEREAS, the Parties recognize the highly uncertain nature of the
Research or Development Projects to be conducted, including the uncertainty
regarding whether one or both Parties may develop new technologies or skills of
value to one or both of the Parties; and
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WHEREAS, the Parties contemplate that their research or development
efforts may yield patents which the Parties desire to license to each other
consistent with the Research Agreement, the Parties hereby enter into this
Agreement relating to licensing of current Patent Rights (set out in SCHEDULE 1
and incorporated herein by reference) and future Patent Rights (to be set out in
SCHEDULE 2, and incorporated herein by reference) to technology developed
through Approved Projects under the Research Agreement;
WHEREAS, in order for the Parties to obtain a reasonable return on their
investment of money and development efforts exerted to develop Materials under
the Research Agreement, and to be able to exploit any Patent Rights under this
Agreement, it is necessary for P&G to be exclusively supplied by GCOR with the
Materials developed under the Research Agreement, the essential terms of this
supply being defined by the attached "Heads of Supply Agreement" (APPENDIX A,
incorporated herein by reference in its entirety);
THEREFORE, in consideration of the mutual promises herein, the Parties
agree as follows.
1. DEFINITIONS
1.1 Capitalized Terms.
Capitalized Terms used throughout this Agreement and not otherwise
defined herein shall bear the meanings set out in definitions in the
Research Agreement.
1.2 Additional Definitions.
"Patent Rights" means patent applications and patents issuing therefrom
(both foreign and domestic) which claim an invention conceived and/or
reduced to practice pursuant to an Approved Project. Patent Rights shall
include those inventions presently listed in SCHEDULE 1 and subsequently
listed in SCHEDULE 2.
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"Territory" means the World;
1.3 Contents and Headings.
The contents page and headings are included for convenience only and
shall not affect the interpretation or construction of this Agreement.
1.4 References.
In this Agreement, unless the context requires otherwise, any reference
to:
(a) a Party or the Parties is to a party or the parties (as the case
may be) to this Agreement;
(b) a person includes a firm, corporation and unincorporated
associations, government, state, or agency of state, any
association or partnership or joint venture (whether or not having
a separate legal personality);
2. LICENSES
2.1 Grant of Licenses.
In consideration of the payment by P&G of certain sums of money for
portions of the research under the Research Agreement, as well as the
expending by GCOR of certain sums for portions of such research, and the
mutual obligations of independent research undertaken by each Party
under the terms of the Research Agreement, as well as other promises and
supply commitments accompanying this Agreement, the Parties hereby grant
the following licenses under relevant Patent Rights;
(i) P&G grants to GCOR for use in the Territory an exclusive
license to make, have made, use and sell Materials per se,
Material stock preparations
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supplied by GCOR (including formulations and granulations),
and any other Materials and formulations to be supplied by
GCOR developed under an Approved Project, as well as methods
for manufacturing said Materials, stock preparations, raw
Materials and/or formulations, under any applicable Patent
Rights owned solely by P&G or jointly by P&G and GCOR;
(ii) GCOR grants to P&G for use in the Territory an exclusive
license to make, have made, use and sell Laundry and Cleaning
Products within the Field of Agreement, and to use such
Laundry and Cleaning Products within the Field of Agreement,
under any applicable Patent Rights owned solely by GCOR or
jointly by GCOR and P&G;
(iii) P&G grants to GCOR for use in the Territory an exclusive
license to make, have made, use and sell all other
compositions other than Laundry and Cleaning Products, and to
use such other compositions outside the Field of Agreement
under any applicable Patent Rights owned solely by P&G, or
jointly by P&G and GCOR; and
(iv) GCOR grants to P&G a non-sublicensable, royalty free,
non-exclusive, worldwide license to Bench Top Assay Patent
Rights for use internally within P&G. Outside the Field of
Agreement P&G is free to exercise these rights with the
limitation that only Isolated Samples may be screened. Within
the Field of Agreement P&G will, during the Agreement period,
only exercise these rights for the benefit of the joint
research performed under an Approved Project.
The licenses granted here by P&G and GCOR shall continue for the life of
the applicable Patent Rights, unless otherwise determined pursuant to
terms under the Research Agreement or Heads of Supply Agreement.
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2.2 Exclusivity.
The exclusive licenses granted pursuant to SUBSECTION 2.1 (i-iii) shall
mean that the licensor shall not have the right to grant within the
Field of Agreement third parties licenses under any of the licensed
Patent Rights to make, have made, use or sell the licensed products or
processes as specified in SUBSECTION 2.1 (i-iii) and that the licensor
shall retain for itself only the right to use the licensed Patent Rights
for its internal research, development and other non-commercial
purposes.
2.3 Obligations in Lieu of Royalties.
P&G shall negotiate the terms of a supply agreement for P&G's exclusive
purchase and GCOR's exclusive supply of Materials in the Field of
Agreement on terms which include those agreed to in the attached Heads
of Supply Agreement (APPENDIX A).
2.4 Discontinuance of Patent Prosecution.
For any Patent Right licensed hereunder, the prosecuting Party (as
determined in accordance with the Research Agreement) may discontinue
its obligation to prepare, file, prosecute and maintain particular
Patent Right(s) by providing the other Party (the "Assuming Party") with
thirty (30) days advance written notice (the "Discontinuance Election")
of any decision to cease preparation, filing, prosecution or maintenance
of that Patent Rights (a "Discontinued Patent"). In such case, the
Assuming Party may, at its sole discretion, continue preparation, filing
or prosecution or maintenance of the Discontinued Patent at its sole
expense. In such case, the Assuming Party shall own exclusively any such
Discontinued Patent; and the Party discontinuing its obligation to
prosecute and maintain such Discontinued Patent shall execute such
documents and perform such acts as may be reasonably necessary for the
Assuming Party to file or to continue prosecution or maintenance,
including assigning ownership of such patents and/or patent applications
to the Assuming Party and maintaining such patents and/or
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patent applications until such assignment of ownership is completed.
Discontinuance may be on a country-by-country basis or for a patent
application or patent series in total.
2.5 Subsequent Licensed Technology
The Parties expect that under their Research Agreement, additional
Patent Rights shall be developed or acquired and herewith agree that
such Patent Rights shall be added periodically by written mutual
agreement as a part of SCHEDULE 2. The license to all such subsequently
developed or acquired Patent Rights shall be the same as that set out in
SECTION 2.1 above.
2.6 Infringement
In the event that the Parties become aware of infringement within the
Field of Agreement of Patent Rights exclusively licensed to one Party,
the Parties agree to discuss whether and on what terms the assignee
and/or exclusive licensee will take action to xxxxx such infringement.
Regardless of whether assignee and/or exclusive licensee takes such
action to xxxxx infringement, it is agreed that neither Party shall
settle or xxxxx such infringement by granting any right to the Patent
Rights in the Field of Agreement without the prior written consent of
the other. In the event that only one Party takes the action to xxxxx
such infringement, the amount of cooperation rendered by the
non-enforcing Party to the other Party shall be left to the business
judgment of the non-enforcing Party.
2.7 Further Assurances
Each party shall, promptly on the other's request and at the other's
cost, execute any further documents or take any steps in relation to the
license referenced under SECTION 2.1 above in order to give full effect
to this Agreement, including by registering the same at any patent
office or offices within the Territory. Any such further documents shall
operate subject to the terms of this Agreement.
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3. INTERPRETATION
A. Captions - Captions are for convenience only and not to be used
in construing this Agreement.
B. Partial Invalidity - Any provision of this Agreement held invalid
or illegal shall be severed from this Agreement and shall not
impair or invalidate any other provision. Any severed provision
shall be replaced by the valid, legal one which comes closest to
such severed provision.
C. Conflict with Other Agreements - This Agreement shall prevail in
any conflict between its provisions and any CDA, sales
literature, order, acceptance, invoice, shipping document,
correspondence, or other document.
D. Choice of Law - This Agreement shall be interpreted under the laws of
Ohio, USA.
4. GENERAL
A. Notices - All notices under this Agreement shall be in writing
and effective either when served by personal delivery or
deposited, postage prepaid in registered or certified mail and
addressed to the respective Contract Administrators.
B. Term and Termination - Unless otherwise agreed by the Parties,
this Agreement shall continue until the termination of the
Research Agreement, on June 30, 2003 or earlier pursuant to
SUBSECTION 7.B of the Research Agreement. All licenses,
ownership rights and all obligations relating to information
about inventions, including CDA terms, which become effective
prior to effective termination or expiration of an Approved
Project, this Agreement, or the Research Agreement (including
SECTION 8, "Rights Upon Termination"), shall survive.
C. Non-assignment - Neither Party shall assign any rights and
obligations under this
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Agreement without the other Party's prior written consent.
D. Independent Contractors - Nothing in this Agreement shall be
deemed to create an agency, employer-employee, partnership or
joint venture relationship between the parties. The parties are
independent contractors. Neither party has the right to control
the work of the other's employees.
E. Force Majeure - Neither Party shall be responsible for delay or
failure to perform caused by events beyond its control. Each
Party shall mitigate any damage caused by such events.
5. WAIVER AND MODIFICATION
No omission or delay in enforcing any right shall be a waiver of any
such right nor shall it affect a Party's ability to enforce such right
thereafter. This Agreement may be modified only by a writing executed by
P&G and GCOR.
This Agreement is duly executed below by the Parties duly authorized officers.
GENENCOR INTERNATIONAL, INC. THE PROCTER & XXXXXX COMPANY
By: /s/ XXXXXX XXXX By: /s/ X.X. XXXXXX
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President
Fabric & Home Care Business Unit
Procter & Xxxxxx Worldwide
Title: Sr. Vice President
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Date: June 30, 2000 Date: June 30, 2000
APPROVED AS TO FORM APPROVED FOR EXECUTION
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Date Date
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APPENDIX A
HEADS OF SUPPLY AGREEMENT
The Parties hereby agree to the following terms for incorporation into a full
Supply Agreement to be negotiated in good faith by the Parties covering
Materials developed under an Approved Project, as incorporated into GCI
Products, developed under the Research Agreement between the Parties dated June
30, 2000.
1. P&G agrees to buy exclusively from GCI 100% of its requirements of
the Material for use at least 10 years from the date of national distribution in
each country of a P&G product containing such Material within the Field of
Agreement, and thereafter GCI shall have the right to extend this P&G obligation
to the life of the last to expire Patent Rights in each country where there is
an extant Patent Right. Subject to the termination provisions in this Agreement
(including PARAGRAPHS 3-6 hereinafter) and in the Research Agreement (including
SECTION 8 therein), nothing in this paragraph is to be viewed as requiring P&G
to purchase the Material for 10 years.
2. GCI agrees to sell exclusively to P&G the Material for at least 10
years from the date of national distribution in each country of a P&G product
containing said Material within the Field of Agreement, and thereafter P&G shall
have the right to extend this GCI obligation for exclusive supply within the
Field of Agreement to the last to expire Patent Right in each country where
there is an extant Patent Right. Subject to the termination provisions in this
Agreement (including PARAGRAPHS 3-6 hereinafter) and in the Research Agreement
(including SECTION 8 therein), nothing in this paragraph is to be viewed as
requiring GCI to sell the Material for 10 years.
3. If after the term of any Supply Agreement for a Material P&G stops
buying this Material without replacing this Material with another Material
supplied by GCI acceptable for use in the P&G products, or if during the term of
any Supply Agreement for a Material GCI breaches or terminates (for other than
cause) the Supply Agreement, then GCI shall immediately be free to sell this
Material to third parties for use within the Field of Agreement, and P&G shall
grant to GCI a non-exclusive, royalty-free license (without the right to
sublicense non-Affiliates) under all applicable Patent Rights owned or
exclusively controlled by P&G pursuant to the Research Agreement or the TTA
necessary to allow GCI to sell this Material to third parties for use within the
Field of Agreement. Moreover, P&G shall not collaborate with third parties or
use this Material within the Field of Agreement (unless supplied by GCI) for
five (5) years and thereafter GCI shall grant to P&G a non-exclusive,
royalty-free license (without the right to sublicense non-Affiliates) under all
applicable Patent Rights owned or exclusively controlled by GCI pursuant to the
Research Agreement or the TTA necessary to allow P&G to collaborate with third
parties and use this Material within the Field of Agreement. However, in the
event that this Material is replaced by another Material supplied by GCI, then
exclusivity of supply to P&G shall be maintained for both Materials pursuant to
the terms of SECTION 2 above.
4. If during or after the term of any Supply Agreement for a Material
GCI stops selling this Material without replacing this Material with another
Material supplied by GCI acceptable
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for use in the P&G products, then P&G shall immediately be free to buy this
Material from third parties for use within the Field of Agreement, and GCI shall
grant to P&G a non-exclusive, royalty-free license (without the right to
sublicense non-Affiliates) under all applicable Patent Rights owned or
exclusively controlled by GCI pursuant to the Research Agreement or the TTA
necessary to allow P&G to buy this Material from third parties for use within
the Field of Agreement. Moreover, GCI shall not collaborate with third parties
or sell this Material for use within the Field of Agreement for five (5) years
and thereafter P&G shall grant to GCI a non-exclusive, royalty-free license
(without the right to sublicense non-Affiliates) under all applicable Patent
Rights owned or exclusively controlled by P&G pursuant to the Research Agreement
or the TTA necessary to allow GCI to collaborate with third parties and sell
this Material for use within the Field of Agreement. However, in the event that
this Material is replaced by another Material supplied by GCI, then exclusivity
of purchase by P&G shall be maintained for both Materials pursuant to the terms
of SECTION 1 herein before.
5. Failure to Supply: If during the term of any Supply Agreement for a
Material GCI fails to supply this Material without replacing this Material with
another Material supplied by GCI acceptable for use in the P&G products, GCI
will arrange for supply to be reestablished over the shortest period of time
possible, whether this is at a GCI facility or through an arrangement with an
alternative supplier (such other supplier to be approved by P&G). In the event
that GCI cannot supply, P&G shall have the right to arrange for an alternative
supplier, provided however that GCI's proprietary information shall be
safeguarded by an appropriate confidential non-disclosure agreement and non-use
other than for the purpose of its supply agreement with P&G; provided further
that GCI shall provide a non-exclusive, royalty-free license to such alternative
supplier procured by P&G covering the technology and know-how required to
produce the Material, including but not limited to samples of the Materials
and/or the microorganisms used to produce the Material, as well as GCI paying
any expenses for any upcharges associated with P&G obtaining the alternate
supplied Material, with a cap on these upcharges to be negotiated in good faith
as part of all Supply Agreements.
Further, in addition to the above ability for P&G being free to buy the Material
from third parties for use within the Field of Agreement, GCI shall grant to P&G
a non-exclusive, royalty-free license (without the right to sublicense
non-Affiliates) under all applicable Patent Rights owned or exclusively
controlled by GCI pursuant to the Research Agreement or the TTA necessary to
allow P&G to buy such Material from third parties for use within the Field of
Agreement. GCI shall not collaborate with third parties or sell this Material
for use within the Field of Agreement for five (5) years and thereafter P&G
shall grant to GCI a non-exclusive, royalty-free license (without the right to
sublicense non-Affiliates) under all applicable Patent Rights owned or
exclusively controlled by P&G pursuant to the Research Agreement or the TTA
necessary to allow GCI to collaborate with third parties and sell this Material
for use within the Field of Agreement. However, in the event that this Material
is replaced by another Material supplied by GCI, then exclusivity of purchase by
P&G shall be maintained for both Materials pursuant to the terms of SECTION 1
herein before.
6. Both parties agree to work together in good faith to reduce costs,
and in furtherance of that principle agree to the following.
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Before a Development Project is initiated, P&G and GCI shall agree
upon commercial Success Criteria for the Initial Supply Agreement which will
include: price, initial supply duration, annual minimum volume necessary to
ensure exclusivity, time necessary to achieve such minimum volumes, and a
price/volume/time matrix ("the Matrix").
7. In the event that P&G purchases a protease Material developed under
the Research Agreement, pursuant to terms set out in this Appendix A, proteases
earlier developed jointly with GCI under earlier Protease Research Agreements
will not be early released from exclusive supply to P&G.
