Confidential Treatment Requested under 17 C.F.R.
Sections 200.80(b)(4), 200.83 and 230.406
*** Indicates omitted material that is the subject of a confidential
treatment request filed separately with the commission.
THIS AGREEMENT AMENDS AND RESTATES THE MAIZE EXPRESSION-BASED GENE DISCOVERY
SERVICES AGREEMENT DATED SEPTEMBER 30, 1998 BETWEEN XX XXXXX AND RHOBIO, AND IS
MADE BY AND BETWEEN:
XX XXXXX, a Utah Corporation, a wholly owned subsidiary of The Xxxxxx-Xxxxx
Corporation, having a place of business at 0000 Xxxxx 0000 Xxxx, Xxxxx X, Xxxx
Xxxx Xxxx, Xxxx 00000 ("XX XxXxx"), represented by Mr. Xxxxxxx Xxxxx, President.
and
RHOBIO S.A. having a place of business at 00/00 XXX XXXXXX XXXXXX 00000 XXXX
XXXXXX ("Company"), represented by Xx. Xxxxxxx Freyssinet, Managing Director
Both parties referred to collectively hereinafter as the "Parties".
RECITALS:
--------------------------------------------------------------------------------
WHEREAS, Company is a Joint Venture between Rhone Poulenc Agro ("RPA"), a French
corporation having an address at 00/00 Xxx Xxxxxx Xxxxxx 00000 Xxxx, Xxxxxx and
Biogemma, a French corporation having an address at 0 Xxx Xxxxxxx Xxxxxxx, 00000
Xxxxx, Xxxxxx (hereinafter "the Partners"); and
WHEREAS, Company wishes to enter into a Plant Genomics project (the "Project" as
defined in Article 1 of this Agreement.)
WHEREAS, XX XxXxx has expertise and technology useful in Expression-Based Gene
Discovery, and agrees to perform for Company the part of the Project for ZEA
XXXX which is related to XX XxXxx'x expertise and technology (the "Program" as
defined in Exhibit A) for the considerations set out herein, and
WHEREAS, XX XxXxx is also willing to enter into additional agreements for
Expression-Based Gene Discovery programs in other plant species to support the
broader objectives of the Project, and will submit a proposal for these other
programs upon Company's request, and
WHEREAS, Company wishes to exploit discoveries made in the Program mainly
through the results of the Project or directly, by licensing such discoveries
respectively to Company Affiliates and Third Parties, and
6
WHEREAS, the Parties signed a Memorandum of Understanding by which the Parties
entered into a Program Definition Phase whereby the details of the Program have
been agreed to, and
WHEREAS, Company has paid XX XxXxx a good faith retainer of [$100,000] to enter
the Program Definition Phase,
NOW THEREFORE, in consideration of the mutual covenants contained herein, the
Parties agree as follows:
1 - DEFINITIONS
--------------------------------------------------------------------------------
1.1 "COMPANY AFFILIATE" means an organization controlled by, controlling or
under common control with (i) Company and/or, (ii) Rhone Poulenc Agro
SA and/or (iii) Biogemma SAS as listed in Exhibit K hereto.
For the purpose of this Agreement, "control" means (a) a direct or
indirect majority ownership or, (b) a majority of voting rights or (c)
a majority of member of the Board of Directors or (d) the right by any
other means to control directly or indirectly the decision of the
organization with respect to the discoveries made under the Program.
1.2 "COMPANY PROGRAM INTELLECTUAL PROPERTY" means any xxxxxxxx xxxx,
including genes and gene expression patterns, and any DNA libraries
resulting from the Program. Such Company Program Intellectual Property
shall include any Patent Application and Patent throughout the world on
such xxxxxxxx xxxx, including genes and gene expression patterns, or
any copyrightable material describing said xxxxxxxx xxxx, including
genes and gene expression patterns produced in connection with this
Agreement, including all copyrights and any extensions and renewals
thereof on any and all such material including translations thereof in
any and all countries, filed pursuant to this Agreement by or on behalf
of Company, its employees or agents.
1.3 "COMPANY PROJECT INTELLECTUAL PROPERTY" means Intellectual Property
which is owned by Company and deriving from the Project and which
specifically includes, incorporates, or is developed from Company
Program Intellectual Property.
1.4 "CONFIDENTIAL INFORMATION" means all detailed information pertaining
to, used in, generated in, or derived from the Program and/or the
Project, including all data, knowhow, methodologies, software,
processes, equipment or information which is identified at the time of
disclosure as "CONFIDENTIAL" and, in the case of disclosures in
non-written form, is identified in writing in summary form within
thirty (30) days as confidential. Notwithstanding the foregoing,
Confidential Information does not include, and nothing in this
paragraph will in any way restrict the rights of either XX XxXxx or
Company to use, disclose or otherwise deal with, any information which:
7
(a) Is demonstrated to have been in the public domain as
of the Effective Date or comes into the public domain
during the term of this Agreement through no act of
the recipient; or
(b) Is demonstrated to have been independently known to
the recipient prior to the receipt thereof, or made
available to the recipient as a matter of lawful
right by a third party; or
(c) Is demonstrated to have been rightfully received by
the recipient after disclosure under this Agreement
from a third party who did not require the recipient
to hold it in confidence or limit its use and who did
not acquire it, directly or indirectly, from the
other party to this Agreement under a continuing
obligation of confidentiality; or
(d) Is disclosed to any governmental regulatory agencies
pursuant to approval for use; or
(e) Is demonstrated to be independently conceived,
invented or acquired by researchers of the recipient
who have not been personally exposed to the
information provided to the recipient hereunder; or
(f) Is disclosed under operation of law, such as a court
order requiring disclosure (however, in such case,
recipient shall promptly notify disclosing Party so
that a timely motion to quash of such order can be
made); or
(g) Is published by a governmental agency as part of the
normal patent filing and prosecution process,
provided that the receiving party shall provide the
providing party with prior notice of such requirement
so that it may seek relief from such order.
1.5 "COMMENCEMENT DATE"means the date on which XX XxXxx effectively
commences the Program; The Commencement Date will be within 90 days
after the Effective Date; XX XxXxx shall inform Company of such
Commencement Date with a 30 days prior notice period.
1.6 "EFFECTIVE DATE" of this Agreement is September 30, 1998.
1.7 "EXPRESSION-BASED GENE DISCOVERY" means the identification and/or
isolation of genes ZEA XXXX through [***]
8
1.8 "GENETIC TESTING SERVICES" means, but is not limited to, marker
assisted back-crossing, molecular marker identification (including, but
not limited to microsatellite markers), transgene identification,
divergence analysis and QTL analysis, with the exclusion of the use of
all the Program Deliverables.
1.9 "INTELLECTUAL PROPERTY" means patents, patents applications,
Confidential Information, know-how, trademarks, copyrights, computer
software (whether patented, copyrighted or otherwise protected), design
right, plant variety rights, and all other rights of similar nature.
1.10 "XX XXXXX INTELLECTUAL PROPERTY" means any Intellectual Property
(including XX XxXxx Program Intellectual Property) owned by XX XxXxx,
and which may be used in the Program, and is deemed by the Program
Steering Committee to be necessary to allow Company and Company
Affiliates to (a) commercially exploit the Company Program Intellectual
Property, (b) commercially exploit the Company Project Intellectual
Property, or (c) allow Company or Company Affiliates to perform the XX
XxXxx Program Intellectual Property. XX XxXxx Intellectual Property is
described in Exhibit B of this Agreement, as amended from time to time.
1.11 "XX XXXXX PROGRAM INTELLECTUAL PROPERTY" means any Intellectual
Property related to instrumentation, methodology, processes, chemical
reagents and computer software not included in Company Program
Intellectual Property, created, developed, or modified in the course of
performing the Program. Such XX XxXxx Program Intellectual Property
includes any Patent Application and Patent throughout the world on such
inventions, improvements and/or discoveries, or any copyrightable
material produced in connection with this Agreement, including all
copyrights and any extensions and renewals thereof on any and all such
material including translations thereof in any and all countries, filed
pursuant to this Agreement by or on behalf of XX XxXxx, its employees
or agents.
1.12 "PATENT" means any U.S. or foreign patent, and its reexamination
certificates, reissues, renewals, and extensions, and "Patent
Application" means any U.S. or foreign patent application, and its
divisions, continuations, continuations-in-part, additions, and
substitutions.
1.13 "STRUCTURAL PLANT GENOMICS" means the analysis of the genetic basis of
plant biochemisty or physiology, including such activities as genome
sequencing, chromosome mapping, whole-cell transcript and expression
mapping, and related bioinformatics.
9
1.14 "FUNCTIONAL PLANT GENOMICS" means the analysis of the functional basis
of plant biochemistry and physiology, including gene-specific
expression analysis, proteomics, allelic variability, functional
analysis and related bioinformatics.
1.15 "PLANT GENOMICS" means Structural Plant Genomics and Functional Plant
Genomics.
1.16 "PROGRAM" means the Expression-Based Gene Discovery program in ZEA XXXX
as set out in Exhibit A hereto.
1.17 "PROGRAM DEFINITION PHASE" means the up-to 150 day period preceding the
Effective Date of this Agreement during which time the Parties have met
to agree on the details of the Program.
1.18 "PROGRAM PERIOD" means the term of this agreement, and any subsequent
extension thereto agreed to by the Parties.
1.19 "PROGRAM RESULTS" means XX XxXxx Program Intellectual Property and
Company Program Intellectual Property.
1.20 "PROJECT" means the Plant Genomics program which Company is developing
with other partners and relating to plants, including (but not limited
to) maize, [***].
1.21 "THIRD PARTY(IES)" means any third party(ies) that is not a Company
Affiliate.
1.22 "THIRD PARTY INTELLECTUAL PROPERTY"means any Intellectual Property
owned by any Third Party and which may be used in the Program, and is
deemed by the Program Steering Committee to be necessary to allow
Company and Company Affiliates to (a) commercially exploit the Company
Program Intellectual Property, (b) commercially exploit the Company
Project Intellectual Property, or (c) allow Company and Company
Affiliates to perform the Project. Third Party Intellectual Property is
described in Exhibit C, as amended from time to time.
2 - PROGRAM OBLIGATIONS
--------------------------------------------------------------------------------
2.1 PERFORMANCE BY XX XXXXX
2.1.1 XX XxXxx shall, on the Commencement Date, commence
the performance of Program, as specified in Exhibit A
hereto and shall perform such Program in accordance
with the terms and conditions of this Agreement. If
any circumstance arises that would delay or otherwise
alter XX XxXxx'x performance under this Agreement, XX
XxXxx shall immediately communicate such information
to
10
Company. Anything in this Agreement to the contrary
notwithstanding, Company and XX XxXxx may at any time
amend the Program by mutual written agreement.
2.1.2 Notwithstanding the provisions of Article 2.3 of this
Agreement, XX XxXxx shall promptly communicate to
Company, prior to the commencement of, and at any
time during, the performance of Program:
(i) any and all XX XxXxx Intellectual Property
which is necessary to: (a) commence and further
the Program, (b) allow the Parties to fulfil their
contractual obligations resulting from this
Agreement or (c) allow Company to commercially
exploit the Company Program Intellectual Property
or the Company Project Intellectual Property. The
initial list of XX XxXxx Intellectual Property is
described in Exhibit B. This list will be modified
from time to time to include that part of XX XxXxx
Intellectual Property which XX XxXxx will
communicate to Company after the execution of this
Agreement. For each item of XX XxXxx Intellectual
Property listed in Exhibit B, XX XxXxx will also
indicate the mechanism by which rights to that
item may be transferred to Company in fulfillment
of XX XxXxx'x obligations as set out in Article
4.6.1.
(ii) any and all Third Party Intellectual
Property which is necessary to: (a) commence and
further the Program, (b) allow the Parties to
fulfil their contractual obligations resulting
from this Agreement, or (c) allow Company and
Company Affiliates to commercially exploit the
Company Program Intellectual Property and/or the
Company Project Intellectual Property. The initial
list of Third Party Intellectual Property is
described in Exhibit C. This list will be modified
from time to time to include that part of Third
Party Intellectual Property which XX XxXxx shall
communicate to Company after the execution of this
Agreement. For each item of Third Party
Intellectual Property listed in Exhibit C, XX
XxXxx will also indicate the mechanism by which
rights to that item may be transferred to Company
in fulfillment of XX XxXxx'x obligations as set
out in Article 4.6.2.
Notwithstanding the obligations in this Article 2.1.2, XX XxXxx
shall inform Company of XX XxXxx'x rights to such Third Party
Intellectual Property related to its obligations under this
Agreement, and in particular its rights to sub-license Third Party
Intellectual Property to Company and Company Affiliates to allow
Company and Company Affiliates to commercially exploit the Company
Program Intellectual Property or the Company Project Intellectual
Property. Whenever XX XxXxx is not allowed to sub-license any such
Third Party Intellectual Property under this article to Company
and Company Affiliates, Company is entitled to modify the Program,
and when applicable, provisions of Article 2.6 hereafter will be
modified accordingly.
11
2.2 PROGRAM MANAGEMENT
Program management includes a Program Manager, Program Teams and
Program Team Managers, and a Program Steering Committee. The roles of
the above listed individuals and groups are set out in Exhibit D
hereto. The details of the Program management roles and
responsibilities may be amended from time to time as necessary by
mutual written agreement of the Parties.
2.3 PROGRAM REPORTS AND DATA TRANSFERS
XX XxXxx shall transmit all [***] data on [***] and [***] bi-weekly in
an electronic format, such electronic format to be agreed upon between
the Parties. XX XxXxx shall deliver all data not related to [***] in a
mutually agreed to time frame and format. Notwithstanding the above
reporting requirements, XX XxXxx shall provide to Company every three
months written project reports that include [***] data and other [***]
data, and XX XxXxx shall submit a final written report within thirty
(30) days of the conclusion of the Program or termination of this
Agreement, whichever occurs first. The Parties shall meet and
determine, in good faith, the criteria under which the such data will
be deemed satisfactory for the purpose of Article 3.1.2.
2.4 RECORD KEEPING
The Parties recognize that the biological materials and data generated in
the Program may have significant value to both Parties in respect of
protecting any Program Results. Both Parties will use data recording and
other record keeping practices that ensure the ability of either Party to
protect such Program Results. The Parties will use the same standard of
care for data recording and record keeping as each uses to protect
biological materials and data of like importance, but in no case less
than a reasonable standard of care. In respect to electronic records, the
Parties will confer from time to time, as necessary, to determine the
standards of care that shall be applied to protecting such electronic
records.
2.5 ACCESS TO RECORDS
XX XxXxx shall make all records pertaining to biological material and
data generated during the Program available for inspection by Company
during normal business hours, upon five (5) business days written notice.
Company rights to such access will extend beyond the termination of this
Agreement only to the extent necessary for Company to seek, or otherwise
maintain protection for Program Results.
2.6 PROGRAM DELIVERABLES
The Program Deliverables are set out in Exhibit F hereto.
12
2.7 EXCLUSIVITY OF PROGRAM
2.7.1 Post-termination Exclusivity
For the term of this Agreement and any subsequent extension
thereto, and for [***] after the term of this Agreement
(other than termination for breach by Company), XX XxXxx agrees
not to enter into any agreements to perform Expression-Based Gene
Discovery in ZEA XXXX, as specifically described in Exhibit A,
with any Third Party.
2.7.2 Follow-on Access to additional XX XxXxx services in ZEA
XXXX
During the term of this Agreement and any subsequent extension
thereto, and [***] from the termination of this
agreement (other than termination for breach by Company) Company
has a first option to contract with XX XxXxx for additional Plant
Genomics programs in ZEA XXXX. Furthermore, and prior to the
signing of any confidentiality agreements, XX XxXxx shall inform
Company if any Third Party approaches XX XxXxx to perform Plant
Genomics program in ZEA XXXX. Upon such notice from XX XxXxx,
Company has the opportunity to submit a proposal for XX XxXxx to
perform for Company a substantially similar program to that
proposed by that Third Party.
2.7.2.1 Exercise of first option to additional programs
proposed by XX XxXxx
If XX XxXxx plans to introduce any new Plant
Genomics programs in ZEA XXXX, it shall notify
Company in writing of such new programs. Upon
receipt of such notice, Company has [***]
to inform XX XxXxx whether or not it wishes to
contract with XX XxXxx for additional projects in
ZEA XXXX that use said new program. If Company fails
to so inform XX XxXxx, XX XxXxx is free to offer
such new technology programs to Third Parties.
Company may request an extension of this option
period for an additional [***], however,
XX XxXxx is under no obligation to agree to such a
request. No extension of this option period past
[***] is permitted for any reason.
2.7.2.2 Opportunity to submit competing proposal for Third
Party programs
If XX XxXxx is approached by a Third Party to
perform a Plant Genomics program in ZEA XXXX, and
subject to any limitation on XX XxXxx'x freedom to
disclose such approach, XX XxXxx shall promptly
inform Company of that Third Party request. Company
has [***] to inform XX XxXxx whether or
not it wishes to submit a competitive bid with XX
XxXxx for a substantially similar program in ZEA
XXXX. If
13
Company fails to so inform XX XxXxx, XX XxXxx is
free to contract to perform the proposed program
with that Third Party. Company may request an
extension of this option period for an additional
[***]; however, XX XxXxx is under no obligation
to agree to such a request. No extension of this
option period past [***] is permitted for any
reason. Nothing in this Article obligates XX
XxXxx to accept Company's bid over that of the
Third Party if the Company bid has lower value to
that of the Third Party.
2.7.3 Third Party Partners
During the term of this Agreement, Company may enlist other
parties as "Third Party Partners" to this Agreement. XX XxXxx must
approve the addition of any specific Third Party Partner, which
approval will not be unreasonably withheld. Such Third Party
Partners will execute a written agreement with XX XxXxx and
Company agreeing to the terms and conditions of this Agreement.
Immediately after the execution of such written agreement, this
Agreement will be amended in order to integrate such Third Party
Partner as a Party to this Agreement.
2.7.4 XX XxXxx rights to subcontract Program services
Whenever, for whatever reason, XX XxXxx, or Company and/or Company
Affiliates are unable to provide Expression-Based Gene Discovery
services necessary to the Program, XX XxXxx may, upon prior
written agreement of Company, contract with Third Parties to
perform such services.
2.7.5 XX XxXxx rights to perform Genetic Testing Services
Nothing in this Article 2.7 prevents XX XxXxx from contracting
with Third Parties for the provision of Genetic Testing Services
in ZEA XXXX or other plant species.
2.7.6 Release of exclusivity by mutual agreement
XX XxXxx may be released from the exclusivity set out in this
Article 2.7 by written agreement from Company.
2.7.7 Release of exclusivity for breach
Should Company breach any material term of this Agreement, and
upon notification of such breach, Company fails to cure said
breach within ninety (90) days, XX XxXxx
14
is free to enter into agreements with Third Parties for Plant
Genomics research and development programs in ZEA XXXX.
2.7.8 Limitations to Exclusivity
The Parties agree that nothing in this Article 2.7, or this
Agreement may be interpreted to in any way grant Company any
rights in or access to Intellectual Property owned by or licensed
to, the PE Biosystems Division, or any other Division, Subsidiary,
or Affiliate of The Xxxxxx-Xxxxx Corporation (collectively, "P-E")
now existing or that may exist in the future, other than that
Intellectual Property which are, or may, in the future, be
available by purchase of products from P-E or accessed through
services contracted with XX XxXxx.
2.8 NO RIGHTS TO COMPANY BIOLOGICAL MATERIAL
The parties agree that nothing in this Article 2 or in this Agreement may
be interpreted to, in any way, grant to P-E any rights in, or access to,
biological material or data (including, but not limited to, specific
tissues, individuals, in-bred lines, and hybrids) belonging to Company or
to Company Affiliates, now existing or that may exist in the future and
which would be made available to XX XxXxx for the purpose of this
Agreement, except as necessary to perform the Program. More generally,
all plant variety rights used in connection with the Program remain the
property of the entity which is the owner of such rights.
3 - XX XXXXX COMPENSATION FOR PROGRAM PERFORMANCE
3.1 DIRECT COMPENSATION
--------------------------------------------------------------------------------
3.1.1 Program Cost
The direct compensation ("Direct Compensation A") payable by
Company to XX XxXxx in relation to the scientific objectives of
Program as described in Exhibit A is US$ 17,990,000; the
indicative amount for each objective is as follows:
- High Throughput DNA Sequencing, including cDNA Library
Development (US$ 4,850,000)
- Transcript Imaging and Sequencing (US$ 9,390,000)
- Bioinformatics software and support (US$ 3,750,000)
Such amounts are in United States Dollars (US$) and are inclusive
of all applicable taxes payable by XX XxXxx.
15
Company has the option to require XX XxXxx to perform the
[***] as described in Exhibit A in addition to the
above-mentioned scientific objectives. Company shall indicate
to XX XxXxx [***] whenever it intends to exercise
such option; and must effectively exercise such option by
[***]. XX XxXxx shall commence to perform the
[***] at latest 30 days after Company has exercised its
option. The direct compensation for [***] will be US$
4,650,000 million ("Direct Compensation B"), will be added to
the above mentioned direct compensation.
The good faith retainer of $100,000 paid by Company to XX XxXxx
upon entering the Program Definition Phase is creditable against
Direct Compensation A and will be deducted from the last payment
made by Company to XX XxXxx, as set out in Article 3.1.2 below.
The Direct Compensation A will be invoiced as follows:
(i) Services for an amount of $6,890,000
(ii) Credit against Deferred Compensation, as set out in
Article 3.1.3, for an amount of $3,600,000
(iii) Technology Access Fees as set out in Article 3.1.4, for an
amount of $7,500,000
The Direct Compensation B will be interpreted as follows :
(i) Services for an amount of US$3,720,000
(ii) Credit against Deferred Compensation, for an amount of
US$930,000 as set out in Article 3.1.3
3.1.2 Payment Schedule
The initial payment of twenty five percent (25%) of the Direct
Compensation A as referred to in Exhibit E is due upon the
Effective Date of this Agreement.
The payment of the balance of the Program cost for each year
will be made in equal semi-annual installments due within
thirty days after the meeting of the Program Steering
Committee. Payment of each semi-annual payment is conditioned
on XX XxXxx'x satisfactory reporting of Program results as set
out in Article 2.3 at Program Steering Committee's
satisfaction. Review by the Program Steering Committee shall be
completed prior to the commencement of each six month period,
beginning on January 1 or July 1 of each year of the Program
term. Company shall notify XX XxXxx within thirty (30) days of
its satisfaction or otherwise with the data reported. If no
such notification is received, XX XxXxx will deem the data to
be accepted, and the semi-annual payment will become due. The
Parties agree that the schedule and
16
amount of any subsequent payments may be renegotiated, if
necessary, by mutual agreement of the Parties. Any such
renegotiation will include the option for an accelerated
payment schedule if Program objectives are achieved ahead of
the dates set out in Exhibit A hereto. XX XxXxx agrees to
invoice Company for each subsequent payment, such invoices to
be in a form mutually agreed to by the Parties.
3.1.3 Credit Against Deferred Compensation
$3,600,000 (three million, six hundred thousand dollars) of Direct
Compensation A and $930,000 (nine hundred thirty thousand dollars)
of Direct Compensation B set out in Article 3.1, 3.1.1 is
considered as an non-refundable credit against Deferred
Compensation as set out in Article 3.2. Company may apply this
credit against such Deferred Compensation, except that in any
single reporting period, Company may credit no more than fifty
percent (50%) of the Deferred Compensation owed for that period
against the advanced payment set out in this Article. The amount
of such credit remaining will be reduced by the amount of the
credit applied in that reporting period.
3.1.4 Technology Access Fees
A component of Direct Compensation A as set out in Article 3.1,
3.1.1 is considered Access Fees on technology made available by XX
XxXxx to Company for use in exploiting the results of the Program
as set out in Article 4.6. The specific components of Technology
Access Fees are set out in Exhibit J of this Agreement.
3.1.5 Transfer of funds
Company shall remit the initial payment and subsequent payments by
electronic funds transfer to the account of XX XxXxx as directed
by XX XxXxx from time to time.
3.2 DEFERRED COMPENSATION PAYMENTS
Company agrees that XX XxXxx'x compensation includes a share in the
financial benefit accruing to Company and Company Affiliates due to the
exploitation of the data generated by the Program. To realize this
compensation, Company agrees to pay XX XxXxx a percentage of value
received from licensing Company Program Intellectual Property and/or
Company Project Intellectual Property ("Deferred Compensation"), as set
forth in Exhibit L of this Agreement. Company further agrees that this
Deferred Compensation fairly represents the value contributed by the
licensed Company Project Intellectual Property.
17
3.2.1 Right to Review Licenses to Company Affiliates and Third
Parties
XX XxXxx has the right to have an independent certified public
accountant retained by XX XxXxx with the prior approval of
Company, which approval shall not be unreasonably withheld, review
licenses of Company Project Intellectual Property to Company
Affiliates and Third Parties to ensure that the license fees,
royalty payments, and other consideration are within the range
generally accepted for like technology in the relevant industry.
If in XX XxXxx'x opinion such licenses are outside the generally
accepted range, XX XxXxx and Company shall meet to determine an
alternative formula by which Company will compensate XX XxXxx
under Article 3.2.
3.2.2 Records
Company shall keep full, true and accurate books of account
containing all particulars which may be necessary for the purpose
of showing the amount payable by way of Deferred Compensation or
by way of any other provision under this Agreement. Such books and
the supporting data shall be open at all reasonable times, for
three (3) years following the end of the calendar year to which
they pertain (and access shall not be denied thereafter, if
reasonably available), to the inspection of an independent
certified public accountant retained by XX XxXxx with the prior
approval of Company, which approval shall not be unreasonably
withheld, for the purpose of verifying Company's royalty
statements or Company's compliance in other respects with this
Agreement. If in dispute, such records shall be kept until the
dispute is settled. The inspection of records will be at XX
XxXxx'x sole cost unless the inspector concludes that royalties
reported by Company for the period being audited are understated
by five percent (5%) or more from actual royalties, in which case
Company shall pay the costs and expenses of such inspection.
3.2.3 Survivorship of Deferred Compensation Obligations.
The obligations of Company to pay Deferred Compensation, as
specified in this Article 3.2, shall survive termination of this
Agreement. If, for whatever reason, Company ceases to exist in its
present form, including but not limited, to dissolution of Company
by the Partners, or change in ownership of Company or the
Partners, the obligations of Company, to pay Deferred Compensation
or other equitable sharing of financial benefit shall be inherited
by Company's successors or assigns. Company, its successors, or
assigns agree to meet with XX XxXxx to determine the manner in
which XX XxXxx will continue to be compensated for its
contribution to the financial benefit of the Company, its
successors, or assigns. Notwithstanding anything in this Article
3.2.3, Company shall not be obligated to pay any royalties
specified in Article 3.2 should XX XxXxx breach its obligations in
Article 14.2.2.
18
3.3 PENALTIES FOR LATE PAYMENT
Any payments due under this Article 3 received after the due date will
accrue interest at an annual rate corresponding to US Dollar 1-month
Libor (as defined in Reuters Telerate page EFX= at 6:00PM French time)
plus 2%.
3.4 PAYMENT IN US FUNDS
Payments and Deferred Compensation accruing under Article 3 shall be
payable in United States dollars. Any Deferred Compensation due under
Article 3.2 shall be in amounts based on the rate of exchange for the
last business day of each quarter as quoted by Reuters telerate page EFX=
at 6:00PM French time.
4 - INTELLECTUAL PROPERTY
--------------------------------------------------------------------------------
4.1 OWNERSHIP OF INTELLECTUAL PROPERTY
4.1.1 Company Program Intellectual Property
All rights and title to Company Program Intellectual Property,
whether patentable or copyrightable or not, belongs to Company and
is subject to the terms and conditions of this Agreement. Nothing
in this Agreement may be construed to prevent Company from using
Company Program Intellectual Property in crops other than ZEA
XXXX. Notwithstanding the provisions of Article 3.2.1 nothing in
this Agreement limits Company's right to license Company Program
Intellectual Property to Third Parties.
4.1.2 XX XxXxx Intellectual Property
All rights and title to XX XxXxx Intellectual Property, whether
patentable or copyrightable or not, belong to XX XxXxx and are
subject to the terms and conditions of this Agreement. Except as
provided in Article 2.7, nothing in this Agreement may be
construed to prevent XX XxXxx using XX XxXxx Intellectual Property
in providing services to Third Parties.
4.2 INVENTION AND INTELLECTUAL PROPERTY DISCLOSURES
Notwithstanding the reporting requirements set out in Article 2.3, XX
XxXxx agrees to separately document and report the any information it
reasonably considers to be relevant to the protection of Company Program
Intellectual Property to Company promptly, and in any event within thirty
(30) days of their identification thereof.
19
4.3 FILING OF PATENT APPLICATIONS
4.3.1 Company Program Intellectual Property
Company has sole responsibility for filing and prosecution of all
Patent Applications or applications for other Intellectual
Property protection for Company Program Intellectual Property.
4.3.2 XX XxXxx Program Intellectual Property
XX XxXxx has sole responsibility for filing and prosecution of all
Patent Applications or applications for other Intellectual
Property protection for XX XxXxx Program Intellectual Property.
4.4 XXXXXX-XXXXX RIGHTS TO COMPANY PROGRAM INTELLECTUAL PROPERTY
4.4.1 Option to XX XxXxx to License Company Program Intellectual
Property
If Company chooses not to exploit any component of Company Program
Intellectual Property itself in a particular field, Company shall
offer XX XxXxx the right to a non-exclusive, non-transferable
license to use that component of Company Program Intellectual
Property in that field under terms and conditions to be negotiated
in good faith between the Parties. Company shall notify XX XxXxx
in writing of any such offer under this Article. Any license to XX
XxXxx of that component of Company Program Intellectual Property
may not have terms and conditions less favorable than that offered
Third Parties. Any such license to XX XxXxx will be irrevocable,
except in the case of termination of contract under Article 6
hereto, for reason of XX XxXxx'x bankruptcy or XX XxXxx'x breach
of contract, whereby the right to such non-exclusive license to
use Company Program Intellectual Property immediately terminates.
4.4.2 Right to a License to Company Program Intellectual Property
to Perform Genetic Testing Services
If Company licenses any Company Program Intellectual Property to a
Third Party (excluding licenses granted to Company Affiliates) to
provide Genetic Testing Services, Company shall grant to XX XxXxx
a license to practice that Company Program Intellectual Property
for such Genetic Testing Services at terms and conditions to be
negotiated in good faith between the Parties. Any such offer to XX
XxXxx may not have terms and conditions less favorable than that
offered to Third Parties.
20
4.5 RIGHTS OF COMPANY TO NON-EXPLOITED XX XXXXX INTELLECTUAL PROPERTY
Notwithstanding the provisions of Article 4.6, if for any reason XX XxXxx
decides not to exploit XX XxXxx Program Intellectual Property for Plant
Genomics and plant breeding, or XX XxXxx chooses to license XX XxXxx
Program Intellectual Property to a Third Party, or both, XX XxXxx shall
offer to Company a non-exclusive license to use such XX XxXxx Program
Intellectual Property for Plant Genomics and plant breeding under terms
and conditions to be negotiated in good faith between the Parties. Any
such offer to Company may not have terms and conditions less favorable
than that offered to Third Parties.
4.6 COMPANY ACCESS TO XX XXXXX INTELLECTUAL PROPERTY AND THIRD PARTY
INTELLECTUAL PROPERTY
4.6.1 XX XxXxx Intellectual Property
Except as provided in Article 4.6.4, XX XxXxx agrees to make
available to Company, by sublicensing, or by another mechanism of
XX XxXxx'x choosing, access to XX XxXxx Intellectual Property to
the extent needed for Company to exploit commercially or use for
its research, the Company Program Intellectual Property and
Company Project Intellectual Property. Any license will include
the right to further sublicense such XX XxXxx Intellectual
Property to Company Affiliates and to any Third Party solely for
the purpose of commercially exploiting said Company Program
Intellectual Property and Company Project Intellectual Property.
The terms and conditions of any such access by Company will be no
less favorable that those offered by P-E or XX XxXxx to Third
Parties for similar uses.
4.6.2 Existing Third Party Intellectual Property
Except as provided in Article 4.6.4, and notwithstanding the
provisions of Article 2.1, to the extent permitted by its existing
agreements, XX XxXxx, or its parent, The Xxxxxx-Xxxxx Corporation
("P-E"), will make available to Company, whether by a
non-exclusive, non-transferable, worldwide sublicense, or by some
other mutually agreed to mechanism, access to Third Party
Intellectual Property licensed to XX XxXxx and used in the
Program. This access will be limited to that needed for Company to
exploit commercially or use for its research, the Company Program
Intellectual Property and Company Project Intellectual Property.
If permitted, any such license will include the right to further
sublicense the Third Party Intellectual Property to Company
Affiliates and to any Third Party solely for the purpose of
commercially exploiting said Company Program Intellectual Property
and Company Project Intellectual Property. The terms and
conditions of any such access by Company will be no less favorable
that those offered by P-E or XX XxXxx to Third Parties for similar
uses.
21
4.6.3 Newly Acquired Third Party Intellectual Property
Except as provided in Article 4.6.4, XX XxXxx will make
commercially reasonable efforts to acquire for Company access to
Third Party Intellectual Property acquired by XX XxXxx during the
Program period and used in the Program only to the extent needed
for Company, and/or Company Affiliates to exploit Company Program
Intellectual Property and Company Project Intellectual Property.
Such access will be by way of a sublicense or any other suitable
mechanism. The terms and conditions of any such access by Company
will be no less favorable that those offered by P-E or XX XxXxx to
Third Parties for similar uses.
4.6.4 No Sublicenses for Services - No Implied License
Nothing in Article 4.6 may be construed to grant Company the right
to sublicense, or otherwise transfer XX XxXxx Intellectual
Property or existing or newly acquired Third Party Intellectual
Property to Third Parties for the provision of Genetic Testing
Services.
Except as expressly set out in this Agreement, nothing in this
Agreement may be interpreted to grant Company, Company Affiliates
or Third Party Partners a license, either express or implied to
any intellectual property owned by or licensed to The Xxxxxx-Xxxxx
Corporation or its subsidiaries and affiliates.
5 - AGREEMENT TERM
--------------------------------------------------------------------------------
The term of this Agreement is three (3) years from the Effective Date, or until
all Program deliverables set out in Exhibit A have been met.
6 - AGREEMENT TERMINATION
--------------------------------------------------------------------------------
6.1 TERMINATION FOR BANKRUPTCY
This Agreement automatically terminates upon:
(i) an adjudication of either Party as bankrupt or insolvent,
or either Party's admission in writing of its inability to
pay its obligations as they mature; or
(ii) an assignment by either Party for the benefit of creditors;
or
(iii) either Party's applying for or consenting to the
appointment of a receiver, trustee or similar officer for
any substantial part of its property; or such receiver,
trustee or similar officer's appointment without the
application or consent of the
22
other Party, if such appointment shall continue
undischarged for a period of ninety (90) days; or
(iv) either Party instituting (by petition, application, answer,
consent or otherwise) any bankruptcy, insolvency
arrangement, or similar proceeding relating to that Party
under the laws of any jurisdiction; or
(v) the institution of any bankruptcy, insolvency arrangement,
or similar proceeding (by petition, application, answer,
consent or otherwise) against either Party, if such
proceeding remains undismissed for a period of (90) days,
or
(vi) the issuance or levy of any judgement, writ, warrant of
attachment or execution or similar process against a
substantial part of the property of that Party, if such
judgement, writ, or similar process is not released,
vacated or fully bonded within ninety (90) days after its
issue or levy.
6.2 TERMINATION FOR BREACH.
Without prejudice to any other remedy, upon any breach of or default of a
material term of this Agreement by either Party, the non-breaching Party
may terminate this Agreement upon sixty (60) days' written notice to the
breaching Party. This notice becomes effective at the end of the sixty
day period unless during this period the breaching Party fully cures such
breach or default to the non-breaching Party's reasonable satisfaction
and notifies the non-breaching Party of such cure.
6.3 UNILATERAL TERMINATION BY COMPANY
If, based on partial Program results or intermediate Program Reports,
Company considers that the Program is no longer relevant to Company's
commercial objectives, Company has the right to unilaterally terminate
this Agreement sixty (60) days after sending written notice to XX XxXxx.
Upon such unilateral termination by Company of this Agreement under this
Article, Company agrees to pay XX XxXxx the amounts shown in Exhibit G of
this Agreement. In addition, XX XxXxx has the right to use any data which
would be a part of XX XxXxx Intellectual Property, developed in the
program to perform Plant Genomic services.
6.4 TERMINATION BY MUTUAL AGREEMENT OF THE PARTIES
If upon review of partial Program results or intermediate Program reports
by Program Steering Committee, the Program Steering Committee determines
that continuing the Program to not be in the best interest of either
Parties, the Parties may terminate this agreement by mutual agreement.
Termination of this Agreement under this Article does not
23
affect the rights and obligations of the parties which occurred prior
to the effective date of termination.
6.5 TERMINATION UPON ACQUISITION OR CONTROL OF XX XXXXX OR P-E BY COMPANY
COMPETITOR
Company may unilaterally and immediately terminate this Agreement without
any indemnification whatsoever to be paid to XX XxXxx whenever P-E or XX
XxXxx comes control of a Company Competitor. XX XxXxx shall promptly
inform Company upon Company Competitor gaining control of P-E or XX
XxXxx. For the purpose of this Article, "control" means (a) a direct or
indirect majority ownership or, (b) a majority of voting rights or (c) a
majority of member of the Board of Directors or (d) the right by any
other means (including but not limited to merger or acquisition of
assets) to control directly or indirectly the decision of the
organization with respect to the discoveries made under the Program. A
"Company Competitor" shall be any one of companies listed in Appendix H,
which may be amended from time to time upon mutual agreement of the
Parties. Upon Company terminating this Agreement due to a change of
control under this Article 6.5, XX XxXxx shall take all reasonable steps
deemed necessary by Company to prevent disclosure of Confidential
Information, Company Program Intellectual Property, and Company Project
Intellectual Property to Company Competitor.
6.6 EFFECT OF TERMINATION
Termination of this Agreement for any reason does not affect the rights
and obligations of the parties which occurred prior to the effective date
of termination.
6.7 XX XXXXX OBLIGATIONS UPON TERMINATION DUE TO XX XXXXX BREACH OR CHANGE OF
CONTROL
Upon termination under Articles 6.2 and 6.5, XX XxXxx shall xxxxx to
Company the right to use XX XxXxx Intellectual Property or Third Party
Intellectual Property used in the Program, and provide any other training
and technology transfer necessary for Company, or Company Affiliates, to
complete the Program in their own laboratories. Any grant of rights will
be under terms and conditions no less favorable than that offered to
Third Parties. If permitted by existing agreements, such rights will
include the right to further sublicense such XX XxXxx Intellectual
Property or Third Party Intellectual Property to Company Affiliates and
Third Parties solely for the purpose of commercially exploiting Company
Program Intellectual Property and Company Project Intellectual Property,
except that such rights specifically exclude the rights to perform Plant
Genomic services or Genetic Testing Services.
6.8 POST-TERMINATION RIGHTS OF COMPANY TO XX XXXXX PERSONNEL, METHODS AND
TECHNOLOGIES
XX XxXxx recognizes that Company may need access to certain personnel,
methods and technologies in order to exploit the biological material and
data generated during the Program ("Post-Termination Access"). The
Parties agree to determine, in good faith, and
24
to the best of their ability, the need for such Post-Termination Access
prior to termination of this Agreement. Such determination shall be made
solely by the Project Steering Committee. To the extent so determined by
the Project Steering Committee, and subject to any limitations set out in
Articles 4.5 and 4.6, XX XxXxx agrees to provide such Post- Termination
Access under terms and conditions to be mutually agreed to at that time.
7 - DISPUTE RESOLUTION
--------------------------------------------------------------------------------
7.1 NOTICE OF DESIRE TO ARBITRATE
The parties wish to avoid disputes relating to or arising out of this
Agreement. In the event of any dispute or perceived problem, each party
pledges itself to give notice to the other party and to seek first an
amicable resolution without resort to arbitration. Except as otherwise
provided in this Agreement, each party has thirty (30) days from the date
of such notice to correct its performance under this Agreement.
7.2 ARBITRATION PROCEDURE
Unless earlier resolved according to Article 7.1, the Parties will settle
all disputes arising out of or relating to this Agreement by arbitration.
This arbitration will be in accordance with the then existing Rules of
the American Arbitration Association by one or more arbitrators
designated in conformity with said rules. The arbitrator(s) shall have
the power to rule on his (their) own competence and on the validity of
this Agreement. The arbitration will take place in New York, New York,
U.S.A. As the sole exception to arbitration, each party has the right to
seek injunctive relief only, from any court having jurisdiction, if
necessary to preserve that party's rights to resolution in any pending or
imminent arbitration proceeding, but no such injunction can prohibit or
postpone such arbitration proceedings and the injunction may be modified
or vacated as a result of the arbitration award.
8 - CONFIDENTIALITY
--------------------------------------------------------------------------------
8.1 DUTIES OF CONFIDENTIALITY
Because Company and XX XxXxx will be cooperating with each other in this
research, each may reveal Confidential Information to the other in the
course of this research. The Parties agree, by using the same degree of
care as each uses for information of like importance, but not less than a
reasonable degree of care;
(i) to hold in confidence any Confidential Information
disclosed by the other party hereunder,
25
(ii) to not disclose Confidential Information to any persons
other than those employees, agents or representatives
within Company, any of the Company Affiliates or Third
Party Partners having a need to know the same for the
purposes related to the Project, and only to the extent
necessary for such purpose, and
(iii) to not disclose Confidential Information to any Third Party
(except to Company Affiliates or Third Party Partners)
without the express written consent of the other, or,
except as may be required to carry out any litigation
concerning the same, provided that each such third party is
informed of the confidentiality of such information and
that each said third party agrees to be bound by at least
the same degree of confidentiality as the Parties are bound
under this Agreement.
These confidentiality provisions shall remain in force for a period of
three (3) years following termination of this Agreement.
8.2 RESPONSIBILITY OVER EMPLOYEES AND AGENTS
Each of the parties agrees to assume individual responsibility for the
actions and omissions of its respective employees, agents and assigns in
conjunction with this research, and to inform same of the
responsibilities for confidentiality and disclosure under this Agreement,
and to obtain their agreement to be bound in the same manner that the
party is bound.
8.3 DISCLOSURE TO POTENTIAL THIRD PARTY PARTNERS
Upon prior approval on XX XxXxx, Company may disclose Confidential
Information to a Third Party solely for the purpose of allowing that
Third Party to evaluate whether it will become a Third Party Partner to
this Agreement as permitted under Article 2.7.3 of this Agreement.
Company shall ensure that any such Third Party is bound under
confidentiality provisions no less restrictive than those set forth in
this Article 8.
9 - PUBLICATION RIGHTS
--------------------------------------------------------------------------------
Neither Party has the right to present at symposia, national, or regional
professional meetings or to publish in journals, theses or dissertations, or
otherwise, the methods developed for Program or the results of Program without
the prior written permission of the other Party. In requesting such permission,
the requesting party shall provide copies of such proposed publication or
presentation at least sixty (60) days prior to the submission of the proposed
publication or presentation to a journal, editor, or other third party.
26
10 - PUBLICITY
--------------------------------------------------------------------------------
A Party may not make any public statements about the Program or this Agreement
without the prior written approval of the other Party.
11 - INDEPENDENT CONTRACTOR
--------------------------------------------------------------------------------
XX XxXxx performs services hereunder only as an independent contractor, and
nothing herein contained may be construed to be inconsistent with that
relationship or status. Neither Party is authorized or empowered to act as agent
for the other for any purpose and must not, on behalf of the other, enter into
any contract, warranty, or representation as to any matter. Neither Party is
bound by the acts or conduct of the other. This Agreement does not constitute,
or create, or can in any way be interpreted as, a joint venture, partnership or
business organization of any kind.
12 - NO CONFLICTING ARRANGEMENTS
--------------------------------------------------------------------------------
Each party represents and warrants that it has the right to enter into this
Agreement and to grant the rights set out in this Agreement. Furthermore, each
Party represents and warrants that no agreements or rights of others are in
conflict with the provisions of this Agreement.
13 - LIMITED WARRANTIES
--------------------------------------------------------------------------------
13.1 XX XxXxx warrants that it has the full right to generate Program
Results, using XX XxXxx Intellectual Property and Third Party
Intellectual Property listed in Exhibits B and C, respectively, of
this Agreement. XX XxXxx will provide reliable data to Company. XX
XxXxx will be responsible for reproducibility and reliability of
data generated and for appropriate interpretation and application
of data. The services will be provided in a good and xxxxxxx like
manner in a timely fashion in accordance with specifications and
objectives set forth herein. XX XxXxx has no responsibility for
reliability of data generated on inappropriate samples provided by
Company in the course of the Program.
13.2 Should Company disclose data resulting from the analysis to any
Third Party, or in connection with any application it may file for
patent or plant variety protection certificates or their
equivalents, or other proprietary rights, or in connection with
any challenge, contest or other proceeding relating to any patent
or plant variety protection certificate, or for any other purpose
including when compelled by law, Company does so at its own risk
and without any warranty, express or implied, from XX XxXxx as to
the value or utility of the data supplied to Company by XX XxXxx.
27
13.3 Company warrants that it has the full right to or access to the
samples supplied to XX XxXxx for analysis, and full right to or
access to any other information or materials provided by Company
to XX XxXxx, for use on Company behalf.
13.4 THE WARRANTIES SET FORTH IN THIS ARTICLE ARE IN LIEU OF ALL OTHER
WARRANTIES, EXPRESSED OR IMPLIED, INCLUDING THOSE OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE. THE
WARRANTIES FOR INTELLECTUAL PROPERTY INFRINGEMENT SET FORTH IN
ARTICLE 14.2.1 ARE THE SOLE WARRANTIES FOR INTELLECTUAL PROPERTY
INFRINGEMENT AND NOT PART OF THE WARRANTIES SET FORTH IN THIS
ARTICLE 13.
14 - INDEMNITIES
--------------------------------------------------------------------------------
14.1 INDEMNIFICATION BY COMPANY TO XX XXXXX
14.1.1 Hold Harmless
Subject to the provisions of Article 15, Company
indemnifies and saves XX XxXxx harmless from any liability
for claims of third parties of injury or death to persons
or damage to property, including any and all legal expenses
incurred by XX XxXxx in the defense of any claim or suit,
to the extent that such liability and expenses are
attributable to willful negligent or fraudulent acts or
omissions of Company, its agents or its employees in
connection with performance under this Agreement. In no
circumstances will such claims and expenses exceed the
payments made to XX XxXxx as set out in Article 3.1, 3.1.1.
14.1.2 XX XxXxx'x Obligations
XX XxXxx shall notify Company of any claim hereunder upon
becoming aware of same and shall cooperate with and provide
all reasonable assistance to Company, at Company's expense,
in defense or settlement of such claim. Company has sole
authority to defend or settle any claim under this
paragraph, provided, however, that XX XxXxx may, at its own
costs, retain separate representation.
28
14.2 INDEMNIFICATION BY XX XXXXX TO COMPANY
14.2.1 Indemnification for Infringement by XX XxXxx of
Intellectual Property Rights
14.2.1.1 Hold Harmless
Subject to the restrictions set forth in this
Article 14.2.1, XX XxXxx agrees to defend and
indemnify Company from and against all
actions or proceedings (including attorney's
fees, and judgements, if any) brought against
Company arising out of any actual or alleged
infringement of any United States or foreign
patent or copyright by services rendered by
XX XxXxx.
14.2.1.2 Company's Obligations
Company shall notify XX XxXxx of any claim
hereunder upon becoming aware of same and
shall cooperate with and provide all
reasonable assistance to XX XxXxx, at XX
XxXxx'x expense, in defense or settlement of
such claim. XX XxXxx has sole authority to
defend or settle any claim under this
paragraph, provided, however, that Company
may, at its own costs, retain separate
representation.
14.2.1.3 Remedy for Infringement
If the service rendered as described herein,
or any portion thereof, is finally adjudged
to infringe a United States or foreign patent
or copyright, or if in XX XxXxx'x opinion is
likely to become subject to such a claim, XX
XxXxx shall, with Company's prior consent
either (i) procure for Company the right to
continue to use results of the program; or
(ii) repeat the analysis using methods that
are non- infringing; or (iii) refund payments
made to XX XxXxx by Company as set out in
this Agreement for that part of the service
finally adjudged to infringe said United
States or foreign patent or copyright, the
refund payments having to be determined in
common by the Parties. In the case of
disputes under this Article, the provisions
of Article 7 shall apply.
14.2.1.4 Limitation of Liability
FOR ANY INFRINGEMENT OF PATENT, COPYRIGHT,
TRADE SECRET, OR OTHER INTELLECTUAL PROPERTY
BY THE SERVICES OR ANY PART THEREOF PURCHASED
BY COMPANY UNDER THIS AGREEMENT THE
29
FOREGOING STATE (i) THE ENTIRE LIABILITY OF
XX XXXXX AND, (ii) THE EXCLUSIVE REMEDY FOR
COMPANY WITH THE EXCEPTION OF TERMINATION OF
THIS AGREEMENT FOR BREACH OF CONTRACT UNDER
ARTICLE 6.2, AND 14.2.2.
14.2.2 Indemnities for XX XxXxx breach of contract
Without prejudice to any other rights and remedies which
Company may have, XX XxXxx uncured breach of this Agreement
shall relieve Company of further financial obligations
under this Agreement. Furthermore, failure to comply with
the confidentiality provisions may create a cause of action
in favor of Company.
14.2.3 Other Indemnities from XX XxXxx
Subject to the provisions of Article 15, XX XxXxx
indemnifies and saves Company harmless from any liability
for claims of third parties for injury or death to persons
or damage to property, including any and all legal expenses
incurred by Company in the defense of any claim or suit, to
the extent that such liability and expenses are
attributable to willful negligent or fraudulent acts or
omissions of XX XxXxx its agents or its employees in
connection with performance under this Agreement. In no
circumstances will such claims and expenses exceed the
payments made to XX XxXxx as set out in Articles 3.1, 3.1.1
and 3.2.
15 - LIMITATION OF LIABILITY
--------------------------------------------------------------------------------
IN NO EVENT SHALL XX XXXXX BE LIABLE FOR ANY SPECIAL, INCIDENTAL,
INDIRECT, OR CONSEQUENTIAL DAMAGES ARISING OUT OF OR IN CONNECTION WITH
(I) ANY ASPECT OF THIS AGREEMENT, (II) XX XXXXX'X PERFORMANCE UNDER THIS
AGREEMENT, OR (III) COMPANY'S USE OF DATA GENERATED UNDER THIS AGREEMENT.
IN NO EVENT SHALL COMPANY BE LIABLE FOR ANY SPECIAL, INCIDENTAL,
INDIRECT, OR CONSEQUENTIAL DAMAGES ARISING OUT OF OR IN CONNECTION
WITH (I) ANY ASPECT OF THIS AGREEMENT, OR (II) COMPANY'S PERFORMANCE
UNDER THIS AGREEMENT OR (III) COMPANY'S USE OF DATA GENERATED UNDER
THIS AGREEMENT.
30
16 - MISCELLANEOUS
--------------------------------------------------------------------------------
16.1 SEVERABILITY
All agreements and covenants contained herein are severable and if any of
the provisions hereof are held to be invalid by a competent tribunal,
this Agreement will be interpreted as if such invalid provisions,
agreements or covenants were not contained herein so long as the
remaining provisions express the mutual intent of the parties under this
Agreement.
16.2 NOTICES
Any notices, statements, payments, or reports required by this Agreement
must be sent by Certified mail, or by Express Mail, or by Federal
Express, with appropriate indication that a signature acknowledging
receipt thereof was required, addressed as follows:
To Company: RHOBIO S.A.
00-00, xxx Xxxxxx Xxxxxx
00000 Xxxx, XXXXXX
Attn.: Xx Xxxxxxx Freyssinet,
With a copy to: Intellectual Property Department
Biogemma
0, xxx Xxxxxxx Xxxxxx
00000 Xxxxx, XXXXXX
Attn.: General Manager
and a copy to: Intellectual Property Department
Rhone Poulenc Agro
00-00 Xxx Xxxxxx Xxxxxx
00000 Xxxx, Xxxxxx
Attn.: General Manager
To XX XxXxx XX XxXxx, Inc.
0000 Xxxxx X-00 Xxxx, Xxxxx X
Xxxx Xxxx Xxxx, Xxxx 00000
Attn.: Mr Xxxxxxx Xxxxx
With a copy to: Intellectual Property Department
PE Applied Biosystems
000 Xxxxxxx Xxxxxx Xxxxx
Xxxxxx Xxxx, Xxxxxxxxxx 00000
Attn.: Licensing Manager
31
16.3 CAPTIONS
The captions in this Agreement are for convenience only and are not a
part of and do not affect the construction or interpretation of any
provision of this Agreement.
16.4 SURVIVORSHIP
Liabilities and obligations of one party to the other maturing prior to
termination survive termination. Also specifically, Articles 1, 2.7, 3.2,
4, 6.6, 6.7, 6.8, 7, 8, 9, 13, 14, 16.4, and 16.6 survive termination of
this Agreement.
16.5 ASSIGNMENT
Neither Party may assign its rights or obligations under this Agreement
to any Third Party except upon receipt of the express written permission
of the other Party, which permission will not be unreasonably withheld.
Any purported assignment in violation of this Article 16.5 is null and
void. When assigned as provided for herein, this Agreement is binding
upon and inures to the benefit of the parties hereto, their successors
and assigns. No assignment of this Agreement by P-E or XX XxXxx to a
Company Competitor is permitted under any circumstances.
16.6 GOVERNING LAW
This Agreement is governed and interpreted in accordance with the laws of
the State of New York, and of the United States.
16.7 NO WAIVERS
No waiver of any right under this Agreement is effective unless contained
in a writing signed by the party charged with such waiver, and no waiver
of any right arising from any breach or failure to perform is a waiver of
any future right arising under this Agreement.
16.8 FORCE MAJEURE
Neither party is liable for its delay in performing or failure to perform
any provision of this Agreement arising from fires, floods, storms,
earthquakes, tidal waves, wars, military operations, national
emergencies, civil commotions, strikes, or any causes beyond a party's
reasonable control or by order, request, recommendation or regulation of
any governmental authority (hereinafter called "Force Majeure"). The
party affected by such Force Majeure shall immediately notify the other
by fax. Any performance obligations under this Agreement will be extended
by the length of such delay but no later than three (3) months after the
date of such Force Majeure, except that if such Force Majeure makes
performance impossible for the Party suffering the Force Majeure, the
other Party shall have the right to terminate this Agreement by written
notice without prior advance notice.
32
16.9 ENTIRE AGREEMENT
The parties acknowledge that this Agreement and the Exhibits attached
hereto represent the sole and entire Agreement between the parties hereto
pertaining to the subject matter thereof and that this Agreement amends
and restates the Maize Expression-Based Gene Discovery Services Agreement
between the Parties signed by Xxxxxxx Xxxxx and Xxxxxx Freyssinet on
September 30, 1998 and supersedes all prior agreements, understandings,
negotiations, and discussions regarding same, whether oral or written. In
the event that the terms of this Agreement are in conflict with the terms
of the Maize Expression-Based Gene Discovery Services Agreement between
the Parties signed on September 30, 1998, the terms of this Agreement
will prevail. No warranties, representations or other agreements between
the parties in connection with the subject matter of this Agreement are
given except as specifically set forth in this Agreement. No supplement,
amendment, alteration, modifications, waiver or termination (except as
provided in this Agreement) of this Agreement shall be binding unless
executed in writing by the parties hereto.
16.10 COUNTERPARTS
This Agreement may be executed in two or more counterparts, each of which
shall be deemed an original, but all of which together shall constitute
one and the same instrument.
33
IN WITNESS WHEREOF, the parties entered into this Agreement effective
September 30, 1998 and have executed two (2) originals each of which are of
equal dignity.
RHOBIO S.A. (Company) XX XxXxx, Inc. (XX XxXxx)
By: By:
---------------------------- ----------------------------
Name: Name:
-------------------------- ----------------------------
Title: Title:
------------------------- ---------------------------
Date: Date:
---------------------------- ----------------------------
By:
------------------------------
Name:
----------------------------
Title:
---------------------------
Date:
----------------------------
34
