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EXHIBIT 10.10
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.
JOINT RESEARCH AND DEVELOPMENT VENTURE AGREEMENT
WHEREAS Genencor International, Inc. ("GCI"), Xxxxxxx Chemical Company
("EMN"), ElectroSynthesis Company, Inc. ("ESC"), MicroGenomics, Inc. ("MGI") and
Argonne National Laboratory ("ANL") have cooperated in the preparation of a
Proposal related to continuous biocatalytic systems for the production of
chemicals from renewable resources and submitted that Proposal under the
Advanced Technology Program of the National Institute of Standards and
Technology;
WHEREAS GCI, EMN, ESC, MGI and ANL desire to work together in a Joint
Research and Development Venture in the production of chemicals using
biocatalytic systems (the Field);
NOW THEREFORE, the Parties agree as follows:
ARTICLE I: DEFINITIONS
1.1 "Commercialization Partnership" shall mean the partnership,
collaboration or other form of cooperation by and between GCI and EMN formed for
the commercialization of products within the Field. A separate agreement
independent of this Agreement shall be negotiated between GCI and EMN which
shall include the terms and conditions controlling the rights, obligations and
operation of the Commercialization Partnership.
1.2 "Inventions" shall mean any inventions, patentable or otherwise,
which arise out of the Proposal and which are first conceived and/or reduced to
practice during the term of and subsequent to the Effective Date of the Joint
Research and Development Venture Agreement and in the six (6) month period
subsequent to the termination of this Agreement or the termination of the
participation of any Party hereto as provided in Article IX, including any
patent application, patent (foreign or domestic) or other intellectual property
rights relating to Inventions.
1.3 "Joint Research and Development Venture" shall mean the
collaboration among GCI, EMN, ESC, MGI and ANL with the objective to carry out
the Proposal, such collaboration to be controlled by the conditions, rights,
obligations and duties created under this Joint Research and Development Venture
Agreement.
1.4 "Proposal" shall mean the research and development plan outlined in
the proposal prepared by GCI, EMN, ESC, MGI and ANL for the Continuous
Biocatalytic Systems for the Production of Chemicals from Renewable Resources
submitted under the Advanced Technology Program of the National Institute of
Standards and Technology, a copy of which is attached hereto and incorporated
herein, which Proposal shall be subject to amendment from time to time.
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1.5 "Effective Date" shall mean the date when funding from the ATP-NIST
is initiated.
1.6 "Inventing Party" shall be any sole or joint inventors of an
Invention, such inventorship to be determined under the standards prescribed by
the U.S. patent laws.
1.7 "Party" shall mean anyone of the entities recited in the preamble
referred to individually and collectively referred to as "Parties."
ARTICLE II: OWNERSHIP OF INTELLECTUAL PROPERTY
2.1 Inventions shall be owned by the Inventing Party who shall grant an
exclusive license to Commercialization Partnership to make, have made, use,
import, sublicense and sell products, compositions and/or processes encompassed
by such Inventions. The terms and conditions of the exclusive license granted as
per this Section 2.1 shall be agreed to pursuant to a license agreement to be
negotiated in good faith by the owner(s) of the Invention and the
Commercialization Partnership, which license agreement shall include provisions
related to reasonable royalty and/or other compensation to be paid by
Commercialization Partnership to the owner(s) of the Invention and further
provided that the license granted in this Section 2.1 shall be subject to the
limitations delineated in Sections 2.2, 2.3, 2.4 and 2.7.
2.2 To the extent that any Inventions relate to *** or all industrial
enzymes outside of those used in pharmaceutical, biopharmaceutical, and
diagnostic applications (GCI Licensed Products), Commercialization Partnership
shall grant to GCI an exclusive sublicense to practice such Inventions to make,
have made, use, import, sublicense and sell GCI Licensed Products subject to a
reasonable royalty and/or other compensation to be paid by GCI in accordance
with the terms of the agreement controlling the Commercialization Partnership.
The Commercialization Partnership shall, pursuant to Section 2.1, pass through a
proportionate amount of such consideration paid by GCI to the applicable
Inventing Parties. The exclusive sublicense granted to GCI with respect to use
of Inventions to make, have made, use, import, sublicense and sell GCI Licensed
Products shall not prevent the Commercialization Partnership from practicing any
such Inventions relating to industrial enzymes to commercialize products,
compositions and/or processes within the Field. Furthermore, to the extent EMN
requires a sublicense to any Invention relating to industrial enzymes for the
sole purpose of the commercialization of an EMN Licensed Product, GCI hereby
grants EMN a non-exclusive license for such limited purpose.
2.3 To the extent that any Inventions relate to products produced and
sold or offered for sale by EMN and the production of such products, as of the
Effective Date as listed on Exhibit A to be agreed to by the Parties and
attached to and incorporated herein (EMN Licensed Products), Commercialization
Partnership shall grant to EMN an exclusive Sublicense to practice such
Inventions to make, have made, use, import, sublicense and sell EMN Licensed
Products subject to a reasonable royalty and/or other compensation to be paid by
EMN in accordance with the terms of the agreement controlling the
Commercialization Partnership. The Commercialization Partnership shall, pursuant
to Section 2.1, pass through a proportionate amount of such consideration paid
by EMN to the applicable Inventing Parties. The exclusive sublicense granted to
EMN with respect to use of Inventions to make, have made, use, import,
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sublicense and sell EMN Licensed Products shall not prevent the
Commercialization Partnership from practicing any such Inventions to
commercialize products, compositions and/or processes within the Field.
2.4 Commercialization Partnership shall grant to each of ESC and/or MGI
an exclusive sublicense to practice their respective Inventions, if any, outside
the Field to which Inventions each was an Inventing Party, and subject to the
rights granted in Sections 2.2 and 2.3. Such sublicense to ESC and/or MGI shall
include the right to make, have made, use, import, sell and sublicense products,
compositions and/or processes outside the Field with no reservation in the
Commercialization Partnership to practice such ESC and/or MGI owned Inventions.
The terms and conditions of any sublicense to ESC or MGI pursuant to this
Section 2.4 shall be negotiated in good faith with the Commercialization
Partnership, and such terms and conditions shall include provisions related to
reasonable royalty and/or other compensation to be paid to Commercialization
Partnership.
2.5 All reasonable costs associated with the filing, prosecution and
maintenance of any patent applications or patents covering Inventions shall be
carried by the Party owning such Inventions subject to further negotiations with
Commercialization Partnership. At a minimum each Party shall if they make an
Invention, file a priority application on such Invention in the United States if
a patent is to be pursued at all on such Invention. If the Party owning such
Inventions does not file patent applications on its behalf in a particular
country other than the United States and Commercialization Partnership has an
interest in so filing an application therein, Commercialization Partnership
shall have the right to file on behalf of the Inventing Party, at the
Commercialization Partnerships' expense, those patent applications. In any
event, the Parties shall cooperate in the preparation and filing of any patent
applications, including sharing copies of such intended filings.
2.6 The right to practice Inventions made pursuant to the provisions of
and during the term of the NIST Cooperative Agreement shall be held subject to a
reservation of rights by the United States Government of a non-exclusive,
nontransferable, irrevocable paid-up license to practice or have practiced for
or on behalf of the United States any such Invention, with the understanding
that the exercise of such license shall not allow public disclosure of
proprietary information related to the licensed Invention.
2.7 Ownership of ANL Inventions shall vest in one or both of GCI or EMN
pursuant to the terms of the ANL Work for Others Agreement WFO No. 95090. Any
such Inventions of ANL shall be exclusively licensed to the Commercialization
Partnership by GCI and/or EMN pursuant to Section 2.1 hereof.
ARTICLE III: PRECEDENCE OF AGREEMENTS
3.1 In the event that a conflict occurs between the terms and conditions
of the Joint Research and Development Venture Agreement and the NIST Cooperative
Agreement, the NIST Cooperative Agreement shall take precedence.
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ARTICLE IV: DISPUTE RESOLUTION
4.1 Any controversy or claim arising out of or relating to the Joint
Research and Development Venture including any dispute relating to patent
ownership, validity or infringement arising during the operation of the Joint
Research and Development Venture shall be settled by arbitration in accordance
with the Rules of the American Arbitration Association before a Board of
Arbitrators numbering three persons, and judgment upon the award rendered by the
Arbitrator(s) may be entered in any Court having jurisdiction thereof. The
decision of any such arbitration shall take place in and be based on the laws of
New York.
ARTICLE V: CONFIDENTIAL INFORMATION
5.1 Confidential Information shall mean (a) technical and business
information of GCI, EMN, ESC, MGI and/or ANL related to the production of
chemicals using biocatalytic systems which may or may not have been patented or
constitute the basis of patentable inventions, but which the disclosing Party
nevertheless considers to be proprietary data (trade secrets and privileged
commercial or financial information) and wishes to protect, and (b) technical
and business information developed by GCI, EMN, ESC and/or MGI during the course
of the Joint Research and Development Venture.
5.2 The only obligations of the receiving Party hereto with respect to
Confidential Information are: (a) to use it only for purposes of carrying out
the undertakings of the Joint Research and Development Venture and/or the
Commercialization Partnership in accordance with this Joint Research and
Development Venture Agreement; (b) to protect it from disclosure to other
Parties not Parties to the Joint Research and Development Venture in the same
manner it protects is own information of a similar nature and to disclose it to
such Parties only with the prior written permission of the disclosing Party; and
(c) to restrict Confidential Information to employees of the receiving Party who
need it for the purpose of the effecting performance of the Joint Research and
Development Venture Agreement and/or Commercialization Partnership.
5.3 The receiving Party shall be obligated to protect any Confidential
Information disclosed under the Joint Research and Development Venture
Agreement. Such Confidential Information must be disclosed in writing and marked
confidential if practicable, or, if disclosed otherwise, identified at the time
of disclosure as confidential and confirmed as such in writing within thirty
(30) days thereof.
5.4 Confidential Information shall not include any information which:
(a) the receiving Party's written records prove was in the receiving Party's
possession under no obligation of secrecy at the time of its disclosure; (b) is
or becomes known to the public generally through no fault or other action by the
receiving Party; (c) is furnished on a nonconfidential basis to the receiving
Party by another Party having a bona fide right to disclose the information on a
nonconfidential basis; or (d) the receiving Party's written records show was
developed independently of Confidential Information.
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5.5 Confidential Information developed during the course of the Joint
Research and Development Venture may be disclosed to third parties only pursuant
to the prior written consent of the Steering Council.
5.6 Confidential Information shall be subject to the limitations
expressed herein for a period of seven (7) years from the early termination or
expiration of this Agreement whichever occurs first.
5.7 The handling of ANL generated data will be in accordance with the
ANL Work for Others Agreement WFO No. 95090.
ARTICLE VI: MANAGEMENT PLAN
6.1 GCI, EMN, ESC, MGI and ANL agree to work together to accomplish the
objectives of the Proposal through the creation of the Joint Research and
Development Venture. GCI, EMN, ESC, MGI and ANL further agree to act in good
faith in carrying out each of their tasks as outlined in the Proposal, or as
modified in a mutually agreed upon manner thereafter, during the term of the
NIST Cooperative Agreement.
6.2 The Joint Research and Development Venture shall be managed through
a Steering Council which has the authority to review R&D progress, and to
review, modify and update the technology plan set forth in the Proposal. The
membership of the Steering Council shall comprise two co-chairpersons, one
selected from GCI and one selected from EMN, and one additional representative
selected from each ESC, MGI and ANL. The members of the Steering Council shall
be selected at the discretion of the Party which the member represents and may
be replaced at any time by the selecting Party. The day to day management of the
project shall be by a team of site project leaders reporting to a project team
coordinator selected by the Steering Council.
6.3 The Administrator for the Joint Research and Development Venture
charged with the administration of funds and for coordinating compliance with
legal and regulatory requirements, including the NIST Cooperative Agreement,
shall be GCI. For the purposes of this Agreement, the Administrator shall act
pursuant to the directives of the Steering Council.
ARTICLE VII: LIMITATION ON APPLICABILITY OF PROVISIONS TO ANL
7.1 With respect to Articles II, IV, IX and Section 1.2 such shall be
applicable to ANL to the extent they are consistent with contract
W-31-109-ENG-38 between ANL and the U.S. Government and U.S. Government rights
under said contract.
ARTICLE VIII: POWER OF ATTORNEY
8.1 By signing this Agreement, each Party grants to Administrator a
Power of Attorney for the sole purpose of binding Participant to the terms and
conditions of the NIST Cooperative Agreement.
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ARTICLE IX: TERMINATION RIGHTS
9.1 The term of this Agreement is five years from the Effective Date or,
as mutually agreed upon, at the cessation of ATP-NIST funding for the Proposal.
9.2 Any Party hereto is entitled to terminate its participation in the
Joint Research and Development Venture at any time, provided that such Party has
given written notice to the Steering Council 90 days prior to such termination.
9.3 The Steering Council may determine, in its sole discretion, that a
Party is no longer necessary for the continued progress of the Joint Research
and Development Venture by providing to such Party 90 days' prior written notice
of termination. Upon termination of a Party pursuant to this Section 9.3, that
Party's participation in the Joint Research and Development Venture shall cease
subject to Section 9.6 below and the Joint Research and Development Venture
shall continue with the remaining Parties.
9.4 In the event of termination of ATP-NIST funding for the Proposal, no
Party shall be under any obligation to provide funds to any other Party in
replacement of such terminated funding nor subject to any liability to any other
Party for injury or loss caused by the termination of such funding.
9.5 Rights and obligations pursuant to Article V shall survive any
action under Sections 9.1, 9.2, 9.3 or 9.4.
9.6 Termination of or by a Party pursuant to this Article shall not
abridge the rights of any Party under Article II hereof. A terminated Party
shall have an affirmative obligation to: report to the Steering Council any
Inventions which were made by such terminating Party and which are subject to
this Agreement within 60 days from the date of termination or the date that such
Invention was made, whichever occurs later; take necessary actions to obtain
patents on such Inventions; and grant the licenses set forth in Article II
hereof.
IN WITNESS WHEREOF, Genencor International, Inc., Xxxxxxx Chemical Company,
ElectroSynthesis Company, Inc., MicroGenomics, Inc. and Argonne National
Laboratory have executed this Agreement on the date written below.
Signed for and on behalf of
GENENCOR INTERNATIONAL, INC.
By: /s/ XXXXXX X. XXXXXX
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Title: Senior Vice President
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Date: September 14, 1995
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Signed for and on behalf of
XXXXXXX CHEMICAL COMPANY
By: /s/ X.X. XX XXXX
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Title: Vice President, New Business
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Date: 9/13/95
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Signed for and on behalf of
ELECTROSYNTHESIS COMPANY, INC.
By: /s/ XXXXXX X. XXXXXXXX
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Title: President
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Date: September 13, 1995
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Signed for and on behalf of
ARGONNE NATIONAL LABORATORY
By: /s/ XXXXX X. XXXXXX
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Title: Procurement Services Manager
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Date: 9/13/95
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Signed for and on behalf of
MICROGENOMICS, INC.
By: /s/ XXXXX X. XXXXXXXXXX
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Title: Vice President,
Business Development
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Date: September 13, 1995
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