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EXHIBIT 10.30
CONFIDENTIAL
***PORTIONS OF THE EXHIBIT HAVE BEEN OMITTED PURSUANT TO A REQUEST FOR
CONFIDENTIAL TREATMENT UNDER RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
THE COMPLETE EXHIBIT, INCLUDING THE PORTIONS FOR WHICH CONFIDENTIAL TREATMENT
HAS BEEN REQUESTED, HAS BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION.
LICENSE AGREEMENT
This License Agreement is by and between Energy BioSystems
Corporation, 0000 Xxxxxxxx Xxxxxx Xxxxx, Xxx Xxxxxxxxx, Xxxxx (hereinafter
referred to as "ENBC") and Genencor International Inc., 000 Xxxx Xxxx Xxxx, Xxxx
Xxxx, Xxxxxxxxxx 00000 (hereinafter referred to as "Genencor").
WITNESSETH:
WHEREAS, ENBC has developed and possesses expertise, know-how and
intellectual property rights relating to "chimeragenisis" of divergent genes on
transient templates and referred to as "ENBC's RACHITT" Technology (as defined
below);
WHEREAS, Genencor is engaged in the commercial manufacturing and
marketing of Industrial Proteins (as defined below) in certain uses and
applications and is interested in licensing ENBC's RACHITT Technology for use in
connection with such efforts; and
WHEREAS, Genencor is willing to fund certain development activities to
be carried out at ENBC's premises and ENBC is willing to provide such services
and the parties intend to execute a definitive collaboration agreement (the
"Collaboration Agreement");
NOW, THEREFORE, ENBC and Genencor hereby agree as follows:
1. DEFINITIONS
The following definitions shall control the construction of each
of the following terms wherever they appear in this Agreement:
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. For the purposes of this section, "Control"
shall mean ownership of at least fifty percent (50%) (or such lesser percent as
may be the maximum that may be owned by foreign interests pursuant to the laws
of the country of incorporation, but in no event shall Genencor own less than
forty percent (40%)) of the shares of stock entitled to vote for directors in
the case of a corporation and at least fifty percent (50%) (or such lesser
percent as may be the maximum that may be owned by foreign interests pursuant to
the laws of the country of domicile but in no event shall Genencor
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own less than forty percent (40%)) of the interests in profits in the case of a
business entity other than a corporation.
1.2 "Agreement" shall mean this License Agreement.
1.3 Agreement Year" shall mean each twelve month period during
the Term as measured from the Effective Date of this Agreement or any
anniversary thereof.
1.4 "Business Partner" shall mean any third party, other than an
Affiliate of Genencor, with whom Genencor has entered into an agreement for ***
any License Product or who *** a Licensed Product.
1.5 "Development Program" shall mean those certain research and
development activities as agreed to by the Parties and detailed in a work plan
to be incorporated into the Collaboration Agreement.
1.6 "ENBC Future Patents" shall mean any patent applications
filed by or on behalf of ENBC after the Effective Date claiming inventions that
are conceived or first reduced to practice under the Development Program or
claiming Improvements and any patents issued thereon. ENBC shall, at least once
annually during the term of this Agreement, provide a list of ENBC Future
Patents which shall be attached to this Agreement as Exhibit 1.6 and
incorporated herein.
1.7 "ENBC Know-How" shall mean any proprietary and confidential
know-how, other than ENBC Patents and the ENBC Future Patents, controlled by
ENBC on or after the Effective Date, including technical data, experimental
results, specifications, techniques, methods, technology, processes, recipes and
written materials, all of which shall be related to ENBC's RACHITT Technology.
For the purposes of this definition, the term "controlled" shall mean owned
and/or having the ability to grant licenses or sublicenses to and/or disclose
ENBC Know-How without violating the terms of any bona fide agreement under which
ENBC may have acquired such Know-How.
1.8 "ENBC Patents" shall mean the patent applications listed in
Exhibit 1.8 attached hereto which shall be updated to include patents related to
ENBC RACHITT Technology and related patent applications filed by ENBC at least
once annually during the term of this Agreement and any patents issued on any
such patent applications and including any reissued patents, re-examined
patents, divisions, renewals, continuations and continuations in part,
substitutions, extensions or foreign counterparts thereof.
1.9 "ENBC's RACHITT Technology" shall mean collectively ENBC's
Know-How and ENBC Patents, as of the Effective Date.
1.10 "Effective Date" shall mean the date of the last signature
hereto.
1.11 "Exercise Fee" shall have the meaning set forth in Section
7.2.
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1.12 "Improvement" shall mean: (i) any improvement, modification
or enhancement to ENBC's RACHITT Technology that is invented, discovered or
developed solely by ENBC or otherwise acquired by ENBC to the extent licensable
to Genencor, subject to the conditions of any third party agreement, prior to
the termination of this Agreement, whether patentable or not; or (ii) any
improvement, modification or enhancement to ENBC's RACHITT Technology that is
invented, discovered or developed either solely by Genencor employees or solely
by ENBC employees or jointly by employees of Genencor and ENBC under the
Development Program of the Collaboration Agreement. Improvements shall not
include rights to Industrial Proteins made using ENBC's RACHITT Technology
unless such Industrial Proteins are useful in practicing ENBC RACHITT
Technology.
1.13 "Industrial Protein" shall mean any protein for production,
sale and/or use in the Licensed Field. Notwithstanding the foregoing, ENBC shall
have the right to use any protein it develops outside the Licensed Field if such
protein is useful both in the Licensed Field and outside the Licensed Field.
1.14 "License Fee" shall have the meaning set forth in Section
3.1.
1.15 "Licensed Field" shall mean the research,
development,production and/or sale of Industrial Proteins for application in
Cleaning (laundry, dish, hard surface, personal care (i.e., oral, hair and skin)
products, Textiles (fabric, fiber and garment processing, modification and
treatment), Grain Processing (hydrolysis of biomass to yield sugars, syrups and
ethanol), Animal Feed (non-therapeutic animal feed additives that provide in
vitro or in vivo benefits) and Food Ingredients (processing aids or ingredients
used in baking, dairy, protein processing and fruit, juice, wine and vegetable
processing).
1.16 "Licensed Product" shall mean any product or process derived
by, expressed, made or produced by the use of or otherwise attributable through
the use of ENBC's RACHITT Technology.
1.17 "Milestone Payments" shall have the meaning set forth in
Section 3.3.
1.18 "Net Sales" shall mean with respect to a Licensed Product,
the gross amount invoiced by Genencor or a permitted sublicensee of Genencor to
unrelated third parties for a Licensed Product, less:
***
(e) Any other reasonable and customary deductions which
according to Generally Accepted Accounting Principles ("GAAP") are bona fide
deductions from gross sales to determine Net Sales, which deductions shall be
subject to audit in accordance with Section 4.5 of this Agreement.
Amounts under this Section 1.18 shall be determined from the books and records
of Genencor maintained in accordance with GAAP consistently applied.
***
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1.19 "Option Fields" shall mean: the research, development,
production and commercialization of products or processes in: (i) Option Field
1/"Agricultural Products" which means trait modification (excluding herbicide
and pesticide resistance traits) and pathway engineering in corn or soy based
plants and seeds; and (ii) Option Field 2/"BioMaterials" which means repeat
sequence structural protein based biomaterials.
1.20 "Option Period" shall have the meaning set forth in Section
7.1.
1.21 "Party" shall mean either ENBC or Genencor, as appropriate,
whereas the term "Parties" shall mean ENBC and Genencor jointly.
2. GRANT OF LICENSES
2.1 Grant of License from ENBC to Genencor. ENBC hereby grants to
Genencor a worldwide, royalty-bearing (in accordance with Article 3 below),
exclusive and sublicensable to Genencor's Affiliates right and license to
practice the ENBC Patents, the ENBC Know-How and the ENBC Future Patents to
make, have made, use, promote, market, distribute, import and sell Licensed
Products within the Licensed Field.
2.2 Sublicensing. Genencor shall have the right to sublicense its
Business Partners to use, sell and/or offer to sell, but not to manufacture,
under ENBC Patents, ENBC Future Patents or ENBC Know-How. Genencor will make a
reasonable effort to notify ENBC of its intention to grant any such sublicense,
and shall provide ENBC with a copy of any such agreement.
2.3 Option Field License. As of Genencor's Exercise Date for any
Option Field which has been exercised in accordance with Section 7.2 hereof,
ENBC shall grant to Genencor:
(a) a worldwide, royalty-bearing non-exclusive and sublicenseable
to Genencor's Affiliates and Business Partners (in accordance with Section 2.2
hereof) right and license to practice the ENBC Patents and ENBC Know-How;
(b) a worldwide, royalty bearing exclusive and sublicenseable to
Genencor's Affiliates and Business Partners (in accordance with Section 2.2
hereof) right and license to practice ENBC Future Patents arising from claimed
Improvements under Section 1.12(ii); and
(c) a worldwide, royalty-bearing, non-exclusive and sublicensable
to Genencor's Affiliates and Business Partners (in accordance with Section 2.2
hereof) right and license to practice ENBC Future Patents arising from claimed
Improvements under Section 1.12(i);
to make, have made, use, promote, market, distribute, import and sell Licensed
Products within the exercised Option Field.
2.4 No Implied License. Any rights not expressly granted by a Party to
the other Party in this Agreement are expressly reserved by such Party and
accordingly, no license
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other than those specified herein shall be deemed granted by this Agreement by
implication, estoppel or otherwise.
3. PAYMENTS
3.1 License Fee. Within thirty (30) days of the Effective Date,
Genencor shall pay ENBC a lump sum payment of $350,000 (the "License Fee"). Such
payment shall be *** except in the circumstances described in Section 9.3
hereof.
3.2 Royalty Rates. (a) Genencor shall, during the stated term of
this Agreement pay ENBC a royalty of *** of Net Sales of Licensed Products
within the Licensed Field, provided that no more than one royalty payment shall
be required to be paid to ENBC per commercialized product, subject to a reduced
royalty as provided for in Section 3.4 or Section 3.5. The obligation to pay the
royalty under this Section 3.2 for any sales occurring before early termination
shall survive the early termination of this Agreement.
(b) Royalty rates and/or other appropriate remuneration shall be
negotiated by the Parties pursuant to Section 7.2 for any Licensed Products sold
in an exercised Option Field.
3.3. Milestone Payments.
(a) In consideration of ENBC entering into this Agreement and the
rights and licenses granted to Genencor hereunder, during the term of this
Agreement, Genencor will pay ENBC certain milestone payments (the "Milestone
Payments") as detailed below:
(i) ***
(ii) ***
(iii) ***
(iv) *** upon the date of first commercial sale of
Licensed Product within the Licensed Field; and
(v) *** upon the date of first commercial sale of
Licensed Product within Genencor Option Field
1; and
(vi) *** upon the date of first commercial sale of
Licensed Product within Genencor Option Field 2.
(b) All Milestone Payments shall be ***, except in the
circumstances described in Section 9.3 hereof. If this Agreement is terminated
for any reason prior to a given Milestone Payment becoming due or if the events
specified for a given Milestone Payment do not occur, then Genencor shall ***;
provided, however, that termination of this Agreement shall ***, except in the
circumstances described in Section 9.3 hereof.
(c) ENBC shall deliver written notice to Genencor of ENBC's
achievement of the applicable milestone referenced in Section 3.3(a)(i)-(ii).
Except to the extent otherwise specified, Genencor shall pay each Milestone
Payment within thirty *** of the receipt of the notice relating thereto.
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3.4 Due Diligence. Genencor shall use reasonable efforts
consistent with industry standards to bring one or more Licensed Products to
market in the Licensed Field. In the event that Genencor despite its efforts has
not marketed and sold Licensed Products giving rise to cumulative sales of ***
of Licensed Product in the Licensed Field within the later of five (5) years
from the Effective Date of this Agreement or three (3) years from the
termination of the Development Program, then Genencor may at any time thereafter
elect either to:
(i) pay to ENBC an annual fee to maintain its exclusive
license in the Licensed Field (the "Exclusivity Fee") for
the next relevant Agreement Year based on the following
Exclusivity Fee schedule:
a) For the first three (3) Agreement Years from the
election, the Exclusivity Fee shall be ***;
b) For the next five (5) Agreement Years, the
Exclusivity Fee shall be ***;
c) Thereafter for the remainder of the Term, the
Exclusivity Fee shall be ***; or
(ii) convert its exclusive license in the Licensed Field to a
non-exclusive license; provided that the royalty payment
due pursuant to Section 3.2 shall be reduced to *** of
Net Sales.
3.5 Royalties in Respect of ENBC Know-How. Genencor's payment of
royalties under Section 3.2 arising from the Net Sales of Licensed Products in
the Licensed Field or any Option Field exercised under Section 7.2 in any
country shall be *** in the event ENBC does not obtain issued patents covering
the RACHITT Technology within five (5) years of the Effective Date within such
country. *** In the event ENBC does obtain issued patents covering the RACHITT
Technology following such five (5) year period, the *** royalty rate provided
under Section 3.2 shall be *** and shall be applicable to all subsequent Net
Sales of Licensed Products.
4. PAYMENT OF AND ACCOUNTING FOR ROYALTIES
4.1 Keeping of Records. Genencor shall keep, and impose on its
Affiliates and sublicensees to keep, complete and correct records of Net Sales
of Licensed Products for a period of three (3) years after the making of a
royalty payment under this Agreement.
4.2 Payment Term. All royalty payments under this Agreement shall
become due and payable thirty days after the last day of the calendar quarter in
which the corresponding sales of Licensed Products were made. Payment shall be
accompanied by a report on a country-by-country basis, showing the gross
receipts from sales of Licensed Products less the deductions permitted in
Section 1.18 and the resulting calculation of the Net Sales used in the
computation of the royalties payable.
4.3 Currency and Exchange Rate. Genencor shall make all payments
to ENBC under this Agreement in U.S. Dollars and to a bank account to be
designated by ENBC. Net Sales shall be calculated on the basis of the rates of
exchange as quoted by the Wall Street Journal (U.S.A. Edition) on the last
business day of the calendar quarter in which the corresponding sales of
Licensed Products were made; provided, however, that if the rate of exchange so
determined for the current quarter varies by an amount of 3% or more from the
rate of exchange so determined on the last business day of the preceding
quarter, the rate of exchange for the current quarter shall be calculated on a
monthly basis on the last business day of each calendar month during such
quarter and applied to the Net Sales for each such month.
4.4 Audit of Genencor's Records. Genencor shall allow ENBC to
appoint a firm of independent certified public accountants to whom Genencor has
no reasonable objection.
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Genencor shall give such accountant access, during ordinary business hours and
subject to a reasonable advance notice, to such records of Genencor as are
necessary to verify the accuracy of any royalty payments made or payable under
this Agreement. Such access shall be granted no more than once in a calendar
year, at ENBC's request and expense. The independent certified public
accountants shall be under a confidentiality obligation to Genencor to disclose
to ENBC in its report only the amount of royalties payable under this Agreement.
In the event it is determined that the records of Genencor indicate that the
amount of royalties payable under this Agreement is more than that actually paid
to ENBC, Genencor shall pay such difference to ENBC within thirty 30 days of
such accountant's report, and if that difference is greater than ten percent
(10%) of the amounts actually paid then the costs and expenses of said
independent certified public accountant shall be borne by Genencor.
5. WARRANTIES
5.1 By ENBC. ENBC represents and warrants to Genencor that:
(a) it has the authority to enter into this Agreement;
(b) it owns the ENBC RACHITT Technology and has the right to
grant to Genencor the licenses granted under Article 2 hereof and that said
licenses do not conflict with or violate the terms of any agreement between ENBC
and any third party;
(c) it has duly informed Genencor, prior to the Effective Date,
of administrative or judicial proceedings, if any, contesting the inventorship,
ownership, validity or enforceability of any element of the ENBC Patents;
(d) it has not as of the Effective Date, licensed the ENBC
Patents and ENBC Know-How to any third party in the Licensed Field; and
(e) as of the Effective Date ENBC has no third party agreements
which would be violated by the disclosure to Genencor of ENBC Know-How.
5.2 By Genencor. Genencor represents and warrants to ENBC that it
has the authority to enter into this Agreement and that this Agreement does not
conflict with the terms of any other agreement to which it is subject.
6. PATENT PROSECUTION/ENFORCEMENT
6.1 Procedures. ENBC agrees to utilize commercially reasonable
efforts to file, prosecute and maintain, at its own expense, all patents and
patent applications related to ENBC Patents and ENBC Future patents. For all
patent families licensed to Genencor hereunder, ENBC shall inform about and, to
the extent reasonably practicable as specified below, give Genencor a reasonable
opportunity to discuss and influence major prosecution events. ENBC shall
nonetheless have the final decision as to any such matter. Such major
prosecution events shall include official communications with the examining
division at European Patent
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Office and United States' Patent & Trademark Office in the form of patent
applications, including divisional applications, reissue applications,
continuations and continuations in part, requests for examination, including
reexamination, written opinions, amended claims, final rejections and notices of
allowance.
6.2 Enforcement of ENBC Patents.
In the event that Genencor provides ENBC with written notice of
and evidence establishing a substantial case of infringement of an ENBC Patent
or ENBC Future Patent by a third party with a product similar to a Licensed
Product which infringing product is made, used or sold in the Licensed Field or
an exercised Option Field ("the Relevant Licensed Patent"), ENBC may at its sole
discretion within sixty (60) days of receipt of such notice and evidence take
action it deems appropriate to xxxxx such infringement. If ENBC elects to take
action against such infringement, Genencor shall render all reasonable
assistance to ENBC in connection therewith including being named as a party, if
necessary. In such an event, Genencor shall have the right to be represented in
that action by counsel of its own choice and at Genencor's expense.
If ENBC fails to take action against such infringement or alleged
infringement, Genencor to the extent allowable by law shall have the right at
its sole discretion to take any necessary action against such infringement or
alleged infringement. In no event shall either Party settle or xxxxx such
infringement by granting any rights to Relevant Licensed Patents which would
diminish the other Party's rights granted hereunder without written approval of
the other Party. If Genencor elects to take action against such infringement,
ENBC shall render all reasonable assistance to Genencor in connection therewith
including being named as a party, if necessary. In such event, ENBC shall have
the right to be represented by counsel of its own choice and at ENBC's expense.
Alternatively, at its sole discretion, ENBC may assign to Genencor all of its
right, title and interest in the Relevant Licensed Patent(s).
The Party or Parties enforcing any Relevant Licensed Patent shall
bear the cost and shall have the right to any sum recovered in such proceedings
in proportion to its costs in such proceeding.
6.3 Defense of Third Party Infringement Claim. Each party shall
promptly notify the other Party of any suit, claim or demand based on actual or
alleged infringement of a third party patent right through the making, having
made, using, selling, offering for sale or importing of Licensed Products.
Genencor shall defend any such suit, claim or demand against it at its cost,
provided that ENBC shall provide reasonable and necessary cooperation and
assistance including information, knowledge, technical expertise, documentation
or evidence that is relevant to the defense to Genencor. ENBC shall bear all its
costs associated with providing such cooperation and assistance to Genencor. In
the event that Genencor shall fail to take action to defend any such
infringement, ENBC shall have the right to defend any such suit, claim or demand
against Genencor at ENBC's cost. In such event, Genencor shall provide
reasonable cooperation to ENBC in the defense of such suit, claim or demand to
the extent it has
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information, knowledge, documentation or evidence that is relevant to the
defense. ENBC shall bear the cost of any such defense.
The Parties shall keep one another informed of the status of and
of their respective activities regarding any litigation concerning the
foregoing. No settlement shall be entered into which affects the rights of the
other party hereto without the consent of such party.
6.4 Royalty Payments During any Third Party Infringement Claims.
During the pendency of any suit, claim or demand alleging infringement of a
third party patent right through the making, having made, using, selling,
offering for sale or importing of Licensed Products, Genencor's royalty payments
due under this Agreement for sale of Licensed Product shall be stayed until a
final unappealable judgment has been rendered. In the event Genencor is
successful in its defense of such suit, claim or demand and can continue or
resume its sale of Licensed Product, it shall pay ENBC the amount of such
royalty payments which would have been made during the pendency of the suit,
claim or demand, less all documented expenses associated with Genencor's defense
of such suit, claim or demand.
6.5 NOTWITHSTANDING THE FOREGOING, NEITHER PARTY MAKES ANY
REPRESENTATION OR WARRANTY, EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED TO
ANY IMPLIED WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OF
ANY PATENT RIGHTS OR KNOW-HOW OR OF NON-INFRINGEMENT OF ANY INTELLECTUAL PROPETY
RIGHTS OF THIRD PARTIES. IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR ANY
CONSEQUENTIAL DAMAGES OF ANY KIND.
7. GENENCOR OPTIONS
7.1 Option to Expand Licensed Field. In exchange for the payment
of *** within thirty (30) days of the Effective Date of this Agreement, Genencor
shall have the right, for a period of twelve (12) months following the Effective
Date (the "Option Period"), to exercise its right to obtain a license under the
ENBC Know-How, ENBC Patents and ENBC Future Patents in accordance with the terms
of Section 2.3 to make, have made, use and sell Licensed Products (the "Option")
in the elected Option Field on the terms described in Section 7.2 below. Such
Option Period may be extended for an additional six months for each of the
Option Fields by payment of *** per Option Field to ENBC on or before the
expiration of twelve (12) months from the Effective Date hereof. The initial
option payment and any extension fee shall be *** except in the circumstances
described in Section 9.3.
7.2 Procedures for Exercise. Genencor shall exercise its Option
to an Option Field by giving notice to ENBC in accordance with Section 12.8
hereof ("Exercise Date"), prior to the expiration of the Option Period, and by
payment to ENBC of the sum of *** per Option Field (the "Exercise Fees"), which
Exercise Fee shall be *** except in the circumstances described in Section 9.3.
The Exercise Fee(s) shall be creditable against future license fees and
royalties applicable to the Option Fields. In the event that Genencor exercises
its Option on a timely basis, the Parties shall negotiate the terms of a license
for the applicable Option Fields, to be governed by the basic licensing terms
contained herein and terminating upon termination or
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expiration of the basic license grant hereunder, it being understood, however,
that the royalty rates, and other terms and conditions shall be similar to other
deals then being done in the industry and shall be negotiated in good faith on a
case-by-case basis, taking into account the relative contribution of ENBC's
RACHITT Technology to the overall product or process to be commercialized in
each Option Field.
8. DEVELOPMENT COLLABORATION
8.1 Collaboration Agreement. Promptly after the Effective Date of
this Agreement, the Parties shall negotiate and conclude the terms and
conditions of the Collaboration Agreement including the work plan detailing the
efforts to be undertaken in the Development Program as well as terms and
conditions for Genencor's funding of ENBC in the amount of One Million Dollars
(1.0 MM USD) over a two (2) year period, starting from the commencement date of
the Development Program. The Collaboration Agreement shall include such other
terms and conditions as the Parties mutually agree upon. All intellectual
property rights arising from the Development Program shall be owned and licensed
in accordance with the terms of this Agreement.
9. TERM AND TERMINATION
9.1 Term. This Agreement shall become effective on the Effective
Date and shall expire on the later of (i) twenty (20) years after the Effective
Date, or (ii) the last to expire of the ENBC Patents and ENBC Future Patents
licensed hereunder. Genencor may terminate this Agreement with respect to the
licenses and Options granted hereunder, upon thirty (30) days prior written
notice.
9.2 Termination Due to Material Breach. If a Party to this
Agreement commits a material breach of any provision of this Agreement
(including but not limited to payment due under Article 3, warranties under
Article 5, Patent Prosecution, Enforcement or Defense under Article 6) and fails
to remedy such breach within thirty (30) days after written notice thereof from
the other Party stating the intent to terminate, the Party not in default may,
at its option, terminate this Agreement by giving thirty (30) days prior written
notice to the Party in default. In addition, ENBC may terminate this Agreement
if the Collaboration Agreement is not entered into within 90 days of the
Effective Date, or if Genencor commits any material breach of such Collaboration
Agreement and such breach is not remedied within thirty (30) days following
written notice thereof by ENBC.
9.3 Genencor Termination Option. In the event that Genencor's
rights to ENBC's RACHITT Technology under this Agreement are materially and
adversely affected as a result of the matter described in Exhibit 9.3 hereof,
Genencor shall have the right to terminate this Agreement in its entirety upon
written notice to ENBC. Such notice shall be given within final determination by
the arbitrator in American Arbitration Association Case No. 75 117 00152 00
declared pursuant to the Demand for Arbitration filed by Maxygen on April 27,
2000 or any other final determination that ENBC does not own or have the right
to grant to Genencor the licenses granted pursuant to Article II hereof. In the
event that Genencor elects to terminate this Agreement, a) ENBC shall ***
hereof, b) no further *** to the date of termination, and c) all rights and
obligations of Genencor under this Agreement shall terminate, except as
otherwise
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provided in Section 9.4 hereof. Furthermore, in the event that Genencor elects
to terminate this Agreement pursuant to this Section 9.3, a) ENBC shall *** or,
b) ENBC shall ***
9.4 Survival of Provisions. Expiration or termination of this
Agreement shall not terminate the obligation of either Party to make any
payments to the other Party that have accrued prior to the date of expiration or
termination. The provisions contained in Sections 4.4, 6.5, 10.1, 10.2, and
Article 11 of this Agreement shall survive its expiration or earlier
termination.
10. CONFIDENTIALITY
10.1 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 ten (10) years from the date of disclosure to treat received
information as strictly secret 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 possession of prior to any disclosure;
(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.
10.2 Press Release. Neither Party shall issue any press release
or 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.
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11. INDEMNIFICATION
11.1 By ENBC. ENBC shall defend, indemnify and hold Genencor
harmless against any liability, damage, loss, cost or expense, including legal
fees arising out of or resulting from: (i) ENBC's breach of a material term of
this Agreement; (ii) ENBC's breach of any representation or warranty set forth
in Section 5; and (iii) any third person claims or suits made or brought against
Genencor to the extent such liability arises out of or relates to ENBC's
negligence or willful misconduct with regard to ENBC's manufacture, use or sale
of the Licensed Product or use of the ENBC Know-How, ENBC Patents or ENBC Future
Patents.
11.2 By Genencor. Genencor shall defend, indemnify and hold ENBC
harmless against any liability, damage, loss, cost or expense, including legal
fees arising out of or resulting from: (i) Genencor's breach of a material term
of this Agreement; (ii) Genencor's breach of a representation or warranty set
forth in Section 5; and (iii) from any third person claims or suits made or
brought against ENBC to the extent such liability arises out of or relates to
Genencor's manufacture, use or sale of the Licensed Product or use of the ENBC
Know-How, ENBC Patents or ENBC Future Patents, except to the extent such
liability as a result of ENBC's negligence or willful misconduct.
11.3 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
Section 11 hereof may apply:
11.3.1 the party seeking indemnification shall notify the
indemnifying party of such fact within 14 days at the address noted in Section
12.8; 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
11.3.2 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.
11.4 Defense and Settlement. The indemnifying party shall control
the defense of any claim and/or suit for which indemnification is provided under
this Section 11. 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.
12. MISCELLANEOUS
12.1 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
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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.
12.2. 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.
12.3. Limitation On Assignment. Neither Party may assign this
Agreement nor any interest or obligation hereunder except (1) with the prior
written consent of the other Party, which consent shall not be unreasonably or
untimely withheld; or (2) 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.
12.4 Marking. Genencor agrees to xxxx, and require its Affiliates
and Business Partners to so xxxx, all products marketed which fall under ENBC
Patents and/or ENBC Future Patents with the appropriate patent numbers.
12.5 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.
12.6 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.
12.7 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.
12.8 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 ENBC: Energy BioSystems Corporation
0000 Xxxxxxxx Xxxxxx Xxxxx
Xxx Xxxxxxxxx, Xxxxx 00000
Telefax: (000) 000-0000
Attention: Xxxx X. Xxxxx, III
If to Genencor: Genencor International, Inc.
000 Xxxx Xxxx Xxxx
Xxxx Xxxx, XX 00000
Attention: Senior Vice President
Commercial & Legal Affairs
Either Party may change its address for the purpose of this
Agreement by giving the other Party written notice of its new address.
12.9 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.
12.10 Applicable Law. This Agreement shall be construed and
interpreted in accordance with the laws of the State of Texas.
12.11 Governmental Compliance. Genencor shall, at all times
during the term of this Agreement and for so long as it, its Affiliates and
sublicensees shall sell Licensed Products, use reasonable efforts and comply and
cause its Affiliates and sublicensees to comply with laws, rules, or regulations
that may control the import, export, manufacture, use, sale, marketing,
distribution and other commercial exploitation of the Licensed Products. Such
applicable laws may include, without limitation, the United States import and
export regulations, the United States Food and Drug Administration's regulations
and other applicable agencies, governmental authorities having jurisdiction.
Genencor shall be responsible for any and all expenses, costs, fees, duties or
taxes necessary to comply with such governmental orders, formalities, rules,
regulations and laws.
12.12 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.
IN WITNESS WHEREOF, this License Agreement has been entered into
on the last date signed by the Parties below.
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GENENCOR INTERNATIONAL, INC.
Date: May 17, 2000 By: /s/ XXXXXX X. XXXXXX
------------------ --------------------------------
Name: Xxxxxx X. Xxxxxx
------------------------------
Title: Senior Vice President
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ENERGY BIOSYSTEMS CORPORATION
Date: May 16, 2000 By: /s/ XXXXX X. XXXXXXXXXX
------------------ --------------------------------
Name: Xxxxx X. Xxxxxxxxxx
------------------------------
Title: President and CEO
-----------------------------
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EXHIBIT 1.6
ENBC FUTURE PATENTS
EXHIBIT 1.8
ENBC Patents
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ENBC CASE APPLICATION. FILING DATE STATUS PATENT NO. EXPIRATION
NO. NO. DATE
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*** *** *** *** ***
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*** *** *** ***
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EXHIBIT 9.3
ENBC/Maxygen Arbitration
On April 27, 0000, Xxxxxxx, Xxx., Xxxxxxx Xxxx, Xxxxxxxxxx (Maxygen), filed
a Demand For Arbitration against ENBC with the American Arbitration Association
(AAA) in Seattle, Washington. Maxygen alleged that ENBC had breached certain
provisions of the License and Development Agreement, dated May 19, 1997, between
ENBC and Maxygen by either misusing Maxygen proprietary technology or by reverse
engineering it in ENBC's development of its RACHITT gene shuffling technology.
ENBC flatly denies these allegations and has so stated in its Answering
Statement filed with the AAA on May 16, 2000.
