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Exhibit 10.28
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.
FUNDED RESEARCH COLLABORATION AGREEMENT
THIS AGREEMENT is made December 22, 1998, ("Effective Date") by and between
ProdiGene, Inc., a Delaware company having a principal place of business at ▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇ (hereinafter
"ProdiGene") and Genencor International, Inc., a Delaware company having a
principal place of business at ▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇ (hereinafter "GCI")(collectively the "Parties").
WHEREAS, the Parties have entered into a Confidentiality Agreement
("Confidentiality Agreement" incorporated herein and attached hereto as APPENDIX
A) dated March 25, 1997, including the addendum dated August 4, 1997, an
Agreement for the Provision of Samples ("Samples Agreement" incorporated herein
and attached hereto as APPENDIX B) dated April 30, 1997, and an Agreement
Related to Plant Expression of Enzymes dated October 10, 1997, ("Enzymes
Agreement");
WHEREAS, the Parties wish to expand the scope of their collaboration and have
entered into negotiations related thereto;
WHEREAS, as a result of these discussions, the Parties desire to enter into a
relationship as set forth herein to further the development of an expression
system for the commercial exploitation of certain enzymes for industrial use;
NOW THEREFORE, the Parties agree as follows:
I. DEFINITIONS
1.1 "Elected Research Program" shall mean a field of research elected or
specified hereunder by the Parties for the allocation of FTEs during the Term of
this Agreement.
1.2 "Target Compound" shall mean a compound designated in an Elected
Research Program for transgenic expression in plants. Such Target Compounds may
comprise proteins, including microbial, plant or animal enzymes, or other
compounds determined as suitable for expression in plants.
1.3 The "Exclusive Collaboration Field" shall mean ***, and technology
related to their production, manufacture, purification, application and/or use.
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1.4 "Affiliate" shall mean any corporation or business entity directly
or indirectly owned or controlled by a Party by virtue of ownership of at least
fifty percent (50%) of the stock and having the right to vote for directors
thereof or otherwise control the management of the corporation or business
entity.
1.5 "Exclusivity Period" shall mean a three year period commencing at
the Effective Date. In the event that GCI exercises its Exclusivity Option under
this Agreement, the Exclusivity Period shall be a five year period commencing at
the Effective Date.
1.6 "FTE" shall mean a one-year allocation to an Elected Research
Program of a scientist having a doctorate, masters or equivalent experience
applicable to the expression of heterologous proteins in plants, or persons with
technical expertise appropriate to conduct or participate in an Elected Research
Program who are under the guidance of such scientist.
1.7 "Project Form" shall mean (i) when executed by one Party, that
Party's proposal to initiate an Elected Research Program, and (ii) when executed
by both Parties, the Parties mutual agreement to engage in an Elected Research
Program. A Project Form shall include identification of the Target Compounds,
Elected Research Program Field, the duration of the Elected Research Program,
resource and FTE allocation, timelines, milestones, success criteria and market
opportunities. The Project Form shall be in the form provided in APPENDIX C.
1.8 "Elected Research Program Field" shall mean the field of research
proposed for an Elected Research Program to which research exclusivity of
Section 2.9 applies.
1.9 "Steering Committee" shall mean a committee made up of two (2)
representatives from each of ProdiGene and GCI who shall be designated by
ProdiGene and GCI, respectively.
1.10 "Background Technology" shall mean any technology, data, results,
biological materials, processes, reports, or other information owned or
controlled by either Party as of the Effective Date.
1.11 "Background Patent Rights" shall mean any patent or patent
application, both foreign and domestic, including any and all divisions,
continuations, continuations-in-part, reissues, re-examination applications,
extensions, supplementary protection certificates, certificates of addition,
inventor's certificates, including international counterparts thereof owned
and/or controlled as of the Effective Date by either Party.
1.12 "Invention(s)" shall mean any technology, data, discoveries,
results, biological materials, processes, reports, or other information
conceived and/or reduced to practice which result from an Elected Research
Program pursuant to this Agreement.
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1.13 "Net Sales" shall mean the gross amount invoiced with respect to a
product to a Party or Affiliate thereof, less:
***
II. ELECTION OF RESEARCH PROGRAMS
2.1 Initiation and Administration of Elected Research Programs.
The Steering Committee shall meet promptly after the execution of this Agreement
and at least quarterly thereafter to discuss the initiation of Elected Research
Program(s). The initiation of Elected Research Program(s) shall be pursuant to
agreement of the Parties as memorialized in a Project Form according to the
procedure provided below.
(a) A Party may propose an Elected Research Program by
completing, signing and forwarding to the other Party a Project Form
which describes the proposed Elected Research Program.
(b) The Party receiving a completed Project Form shall consider
in good faith the proposed research as described in the Project Form and
respond in writing to the proposing Party within 30 days of receipt of
the executed Project Form in accordance with the following:
(i) If the receiving Party agrees to participate in the
proposed Elected Research Program, it shall give notice by
returning a duly executed copy of the Project Form to the
proposing Party. The fully executed Project Form shall be
sufficient memorialization of the mutual agreement of the Parties
to perform the research described therein and shall be the basis
for an Elected Research Program to which the terms of this
Agreement apply; or
(ii) If the receiving Party does not agree to participate
in the proposed Elected Research Program, it may decline to
execute the Project Form or, alternatively, may notify the
proposing Party that the receiving Party agrees to pursue the
proposed Elected Research Program only under modified conditions.
(c) Elected Research Program(s) which are initiated as provided
in subsection (b) above shall commence immediately upon mutual execution
of the applicable Project Form and shall be performed essentially as
provided in the Project Form. The terms of this Agreement, including
those provided in sections 2.4 through 2.9, shall govern all Elected
Research Program(s), except as provided in Section 2.2 herein.
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2.2 The Parties may mutually agree to the allocation of FTEs funded as
provided herein to the research program described in the Enzymes Agreement. In
such event, the terms of the Enzymes Agreement shall continue to control such
research program despite funding under this Agreement. Notwithstanding the
above, FTEs allocated hereunder to the Enzymes Agreement research program shall
be funded at the rates provided in this Agreement.
2.3 Elected Research Programs may pertain to the following subject
matter:
(a) Elected Research Program(s) Pursuant to Mutual Agreement. The
Parties may agree to initiate an Elected Research Program(s) related to
any plan of research within the Exclusive Collaboration Field, or such
other research field as the Parties may mutually agree upon, provided
that at least *** Elected Research Programs shall be initiated during
the Term.
(b) GCI Elected Research Programs. GCI may elect to initiate an
Elected Research Program comprising a Target Compound from within the
Elected Research Program Fields listed in Sections 2.3(b)(i) through
2.3(b)(v). For the avoidance of ambiguity, the programs provided in this
subsection with respect to Target Compound(s) are not intended to be
limiting in any way with respect to potential programs which may be
elected under Section 2.3(a):
***
(c) Exploratory Programs. The Parties may mutually agree to
initiate a program intended to analyze, on an exploratory basis, the
commercial and/or technical feasibility or desirability of plant
expression of certain genes. Exploratory programs shall not exceed the
transgenic expression and/or analysis of *** genes. Allocation to such
programs shall not exceed *** of the total funding provided pursuant to
Section 5.1(a) or 5.5.
2.4 ProdiGene and GCI agree to submit quarterly reports to the Steering
Committee detailing progress relating to their responsibilities pursuant to an
Elected Research Program and any pertinent findings, results, conclusions or
other information resulting from an Elected Research Program.
2.5 With respect to the conduct of an Elected Research Program, the
Steering Committee will make decisions including:
(a) reviewing the general direction and course of the research;
(b) determining appropriate allocation of funding to Elected
Research Program(s) provided hereunder and communicating the agreement
of the Parties related to such allocation;
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(c) approving changes in the direction of the research;
(d) reviewing and approving achievement of any milestones;
(e) reviewing and advising with regard to patents and patent
strategy;
(f) making recommendations to respective management of the
Parties or making decisions, if appropriate, on all decision points
throughout the course of the research; and
(g) review of the progress and/or desirability of Elected
Research Programs.
2.6 Termination of Elected Research Programs. Elected Research Programs
may be terminated as follows:
(a) Upon completion of the Elected Research Program as described
in the Project Form;
(b) Upon mutual agreement of the Parties that technology, market,
regulatory or other considerations suggest that continued investment of
time, resources or money related to an Elected Research Program to
develop and commercialize a Target Compound may be unsuitable or
undesirable. Pursuant to this sub-section, the Parties may elect to hold
discussions toward a mutually acceptable resolution, including
alternative target proteins, the transfer or modification between the
Parties of rights to commercialize products, or termination of the
Elected Research Program, as appropriate.
(c) Upon sixty (60) days notification to ProdiGene, GCI may elect
to cancel an Elected Research Program. In the event that GCI elects to
cancel an Elected Research Program under this subsection, ProdiGene may
continue such program, provided that such continuance is not
inconsistent with the terms of this Agreement, including Article 3
hereof. GCI agrees to negotiate in good faith with ProdiGene for a
license to intellectual property exclusively licensed to GCI under
Section 2.3(c) in the event that such license is necessary for the
continuance or commercialization of the results of such canceled program
by ProdiGene.
2.7 Intellectual Property Rights and Commercialization in Elected
Research Programs. Intellectual property rights developed during or related to
Elected Research Programs shall be treated as follows:
(a) To the extent that either Party owns or controls Background
Technology or Background Patent Rights, such Background Technology and
Background Patent Rights shall remain the sole property of that Party to
exploit in
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any manner it chooses at its sole discretion, except to the extent
provided for herein.
(b) Each Party agrees to promptly, but no later than 30 days
after the submission of an invention disclosure to a Party's legal
department or counsel, advise the other Party in writing of any
Invention(s) made pursuant to this Agreement.
(c) Invention(s) made as a result of an Elected Research Program
and any patents, copyrights or other intellectual property based on such
Invention(s) shall be owned jointly by the Parties. Subject to Section
2.7(d) hereof, rights to commercialize such Invention(s) shall be as
follows:
(i) To the extent that Invention(s) are specific to
genetically modified plants and related genetic materials (e.g.,
genes, plasmids, expression vectors, and processes for producing
transgenic plants capable of expressing a desired protein), GCI
grants to ProdiGene an exclusive license to make, use, sell,
offer to sell, have made, import and export, with the right to
sublicense, products and processes specific to genetically
modified plants and related genetic biomaterials embodying such
Invention(s), subject to the payment of a royalty or other
mutually agreed upon compensation to GCI and to the rights of GCI
pursuant to part (ii) hereof. Notwithstanding the above, GCI
shall retain the right to use Inventions under this subsection
for internal research purposes only.
(ii) To the extent that Invention(s) relate to the
Exclusive Collaboration Field, ProdiGene hereby grants to GCI an
exclusive license to make, use, sell, offer to sell, have made,
import and export, with the right to sublicense, products or
processes embodying such Invention(s), subject to the payment of
a royalty or other mutually agreed upon compensation to
ProdiGene, which royalty or other compensation will be the
greater of *** of Net Sales of a product embodying such
Invention(s) or *** of the gross margin received by GCI ***
calculated in accordance with U.S. Generally Accepted Accounting
Principles. Notwithstanding the above, ProdiGene shall retain the
right to use Inventions under this subsection for internal
research purposes only.
(iii) To the extent that Invention(s) are not encompassed
within subsections (i) or (ii) of this Section, the Parties shall
each have the right to make, use, sell, offer to sell, have made,
import and export, with the right to sublicense, such
Invention(s), subject to further agreement between the Parties.
(iv) In the event that ProdiGene is subject to a sale of
substantially all of its business assets or equity to a third
party, GCI shall be granted a non-exclusive, royalty bearing
license to make, use, sell, offer to sell, have
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made, import and export, with the right to sublicense, products
or processes embodying such Invention(s) for any Inventions
described in subsection 2.7(c)(i).
(d) Royalty or compensation due to a Party pursuant to Section
2.7(c) shall be the subject of a written agreement between the Parties
and shall take into consideration the existence of, or filing of
applications for, intellectual property, the nature of the Invention(s)
and its relative contribution to the product sold. In addition, or
alternatively, to the royalty or compensation provided for in Section
2.7(c), the Parties may elect to enter into a separate supply agreement
pursuant to which ProdiGene supplies raw materials and/or other goods
useful for the production of protein products to GCI for processing and
eventual sale. Any controversy arising between the Parties which is
related to royalty or other compensation to which a Party may be
entitled under Sections 2.7(c) may, upon request of a Party (the
Requesting Party), be subject to arbitration in accordance with the
Licensing Agreement Arbitration Rules of the American Arbitration
Association with the following modifications:
(i) Arbitration will be before a panel of three
neutral, independent, disinterested, unbiased
arbitrators, bound by the Rules of Ethics of the
ABA and AAA for neutral arbitrators and none
shall have ex Parte communications with either
of the Parties. The arbitration panel will be
composed of one member selected by each Party
and a neutral third arbitrator selected by those
members, provided that each of the arbitrators
will be subject to the consent of both Parties
and must possess significant experience in
licensing matters related to biotechnology, and
in particular to technology related to
transgenic plants and their use to produce
heterologous proteins;
(ii) Because prompt disposal of the dispute is
important to both Parties, judgment shall be
provided within *** of the request for
arbitration. The judgment shall be supported by
findings of fact and conclusions of law.
Judgment by the arbitration panel may be entered
in any court having competent jurisdiction
thereof. In the event that judgment is not
entered by the arbitration panel within *** of
the request, no obligation shall remain to
continue the arbitration; and
(iii) If judgment rendered by the arbitration panel is
equivalent to a standing offer previously
rejected by the Requesting Party, the Requesting
Party shall pay all expenses incurred by the
other Party during the arbitration.
(e) Preparation, filing, prosecution, maintenance and taking such
other actions as are reasonably necessary or appropriate with respect to
the development of intellectual property protection arising from an
Elected Research Program as well as the costs thereof shall be
undertaken by the Party having the right to commercialize the
Invention(s) pertaining to such filed patents pursuant to Section
2.7(c). The Parties shall cooperate in the preparation and filing of any
patent application relating to the Invention(s) including having any of
their employees who are named as inventors review and comment on such
patent applications and the prosecution related thereto, as well as
having such employees execute necessary documents for the filing of such
patent applications worldwide.
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Each Party shall endeavor in good faith to coordinate its efforts with
those of the other Party to minimize or avoid interference with the
prosecution of the other Party's patent applications. Each Party shall
provide the other with a copy of any patent application which relates to
the Research, at least 20 days prior to filing the first of such
applications in any jurisdiction, for review and comment by the other
Party. In the event that Invention(s) are made as contemplated in
Section 2.7(c)(iii) for which it is appropriate to file a patent
application(s), the Parties, through the Steering Committee, will agree
which Party is most appropriate to prepare, file and prosecute that
patent application(s) based on the nature of the Invention(s) and the
relative expertise of the Parties.
(f) Either Party may discontinue its obligation to prepare, file,
prosecute and maintain (including the costs related thereto) a
particular patent or patent application filed by it pursuant to this
Agreement by providing the other with thirty (30) days advance written
notice (the "Discontinuance Election") of any decision to cease
preparation, filing, prosecution and maintenance of that patent or
patent application (a "Discontinued Patent"). In such case, the other
Party may, at its sole discretion, continue preparation, filing and
prosecution or maintenance of the Discontinued Patent at its sole
expense. In such case, the acquiring Party shall own exclusively any
such patent or patent application and patents maturing therefrom and the
commercialization rights provided in Section 2.7(c); and the other shall
execute such documents and perform such acts as may be reasonably
necessary for the other Party to file or to continue prosecution or
maintenance, including assigning ownership of such patent or patent
application and maintaining such patents until such assignment of
ownership is completed. The Discontinuance Election may be on a
country-by-country basis or for a patent application or patent series in
total.
(g) ProdiGene represents and warrants to the best of its
knowledge with respect to its Background Patent Rights that ProdiGene
has title or right to the Background Patent Rights, and the grant of any
license to GCI contemplated in this Agreement under such rights does not
require the consent of a third party and is not encumbered by any
agreement, assignment or other encumbrance that is inconsistent with the
provisions of this Agreement and does not create any obligation on the
part of GCI to any third party. Further, ProdiGene represents and
warrants to the best of its knowledge with respect to the Background
Technology, that it has ownership or license under such technology owned
or controlled by ProdiGene and such ownership or licensure is not
encumbered by any agreement, assignment or other encumbrance that
prohibits ProdiGene from fulfilling its obligations under this Agreement
or creates any obligation on the part of GCI to any third party.
ProdiGene makes no representation or warranty regarding the freedom to
operate, including with respect to any results of any Elected Research
Program, under third party issued patents not encompassed within the
Background Patent Rights and/or the Background Technology.
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2.8 Confidentiality, Treatment of Samples and Publications.
Confidentiality, samples and publications pursuant to this Agreement or any
Elected Research Program shall be treated as follows:
(a) The Parties agree that confidential information owned or
developed by either Party and disclosed pursuant to this Agreement shall
be considered within the terms of the Confidentiality Agreement;
provided that the period of permissible disclosure thereunder shall be
the term of this Agreement and the period of confidentiality provided in
said Confidentiality Agreement will extend for five (5) years from the
expiration of this Agreement.
(b) The Parties agree that the terms of the Samples Agreement,
except as specifically modified herein, will control with respect to any
samples or materials provided from GCI to ProdiGene under this
Agreement; provided that the Parties' obligations thereunder will extend
for five (5) years from the expiration of this Agreement.
(c) In the event that the terms of either of said Confidentiality
Agreement or said Samples Agreement are inconsistent with the terms
provided expressly herein, the terms of this Agreement shall control.
(d) Neither Party will publish any material arising from any
Elected Research Program without prior written approval of the other
Party. Such approval shall not be unreasonably withheld but may be
subject to a delay of up to (3) months total for assessment of the
proposed publication and to enable preparation and filing of appropriate
patent application(s). Both Parties will procure that any person
involved or interested in an Elected Research Program will not publish
or communicate material arising therefrom without first complying with
the provisions of this Section.
2.9 Research Exclusivity. ProdiGene agrees that it will not perform
research and/or development or enter into any commercial agreement in or related
to an Elected Research Program with any third party during the term of such
Elected Research Program, after which ProdiGene, subject to its obligations of
confidentiality, exclusivity and to proprietary rights granted to GCI hereunder,
may continue such research without regard to GCI.
III. EXCLUSIVITY OF COLLABORATION
3.1 In consideration of payment pursuant to Section 5.4, ProdiGene
agrees that it will not perform research and/or development or enter into any
commercial agreement in the Exclusive Collaboration Field with any third party
during the Exclusivity Period. ProdiGene further agrees that it will not engage
in discussions with any third party regarding the Exclusive Collaboration Field
during the Exclusivity Period.
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3.2 ProdiGene hereby grants to GCI an option to extend the Exclusivity
Period for an additional two years (Exclusivity Option). GCI shall exercise the
Exclusivity Option, at its sole discretion, by notifying ProdiGene in writing
prior to the expiration of the Exclusivity Period of its intent to exercise the
Exclusivity Option. Upon exercise of the Exclusivity Option and in consideration
of the extended Exclusivity Period conferred thereby, GCI shall pay to ProdiGene
the amount provided in Section 5.5.
3.3 The exclusivity provided in this Article applies to any
collaboration between ProdiGene and any third party, but shall not apply to ***
IV. PRECEDENCE OF AGREEMENTS
In the event of any conflict between the terms of the Enzymes Agreement
or any other agreement between the Parties and this Agreement, this Agreement
shall be controlling.
V. PAYMENTS
5.1 Payments for Elected Research Program(s):
(a) GCI shall pay to ProdiGene $2,500,000 USD during the three
year period immediately following the Effective Date as funding for
Elected Research Programs. Funding provided in this Section shall be
pursuant to the agreement of the Parties, and shall include payment for
FTEs required to adequately staff Elected Research Program(s) and
technical milestones, if any, which are appropriate to Elected Research
Program(s). The funding provided in this Section shall constitute a
total of at least *** FTEs and no more than *** FTEs over the Term.
(b) Allocation of FTEs shall be not less than *** per annum and
not more than *** per annum during the Term. The funding rate for FTEs
allocated during the Term shall be as follows:
(i) FTEs allocated during 1999 shall be at a rate of ***
per FTE;
(ii) FTEs allocated during 2000 shall be at a rate of ***
per FTE;
(iii) FTEs allocated during 2001 or thereafter shall be at
a rate of *** per FTE.
(c) Payment under Section 5.1(a) shall comprise two payments per
year, the first payment being on the Effective Date or annual
anniversary thereof (First Payment Date) and the second payment being
six months after the Effective Date or annual anniversary thereof
(Second
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Payment Date) during the Term. The amount of each payment shall be as
follows:
(i) Within 30 days of the First Payment Date, GCI shall
pay to ProdiGene the prorated amount of the projected FTE
allocation for the six month period immediately following the
First Payment Date.
(ii) Within 30 days of the Second Payment Date, GCI shall
pay to ProdiGene the prorated amount of the projected FTE
allocation for the six month period immediately following the
Second Payment Date, adjusted for the actual allocation of FTEs
made in the previous six month period.
(d) Agreed upon payments for technical milestones met during the
Term with respect to Elected Research Program(s) shall be paid within 30
days of confirmation that such technical milestone has been met.
5.2 At quarterly intervals, ProdiGene will provide to GCI a statement
detailing the resource and time expenditures which correspond to the payments
made to ProdiGene by GCI under Section 5.1 or 5.5.
5.3 Any work performed by GCI shall be at GCI's sole expense.
5.4 In consideration of the Exclusivity Period as provided in Section
3.1, GCI shall pay to ProdiGene *** within 30 days of the execution of this
Agreement.
5.5 In the event that GCI exercises its Exclusivity Period Option under
Section 3.2, GCI shall pay to ProdiGene a total of $2,000,000 USD during the
extended Exclusivity Period as funding for Elected Research Program(s) during
the extended Exclusivity Period. Funding provided in this Section shall be
pursuant to the agreement of the Parties, and shall include payment for FTEs
required to adequately staff Elected Research Program(s) and technical
milestones, if any, which are appropriate to Elected Research Program(s). The
funding provided in this Section 5.1(a) shall constitute a total of at least ***
FTEs during the extended Exclusivity Period. Payment to ProdiGene pursuant to
this Section 5.5 shall be in accordance with Section 5.1(c).
VI. TERM AND TERMINATION
6.1 The Term of this Agreement shall be for three (3) years from the
Effective Date, such term to be automatically renewable for a period of two (2)
years upon exercise of the Exclusivity Option provided in Section 3.2.
6.2 The Term of any Elected Research Program shall be the Term of this
Agreement or the period of time for which FTEs are allocated, whichever is
greater.
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Accordingly, the Parties may agree in writing that the term of an Elected
Research Program shall extend beyond the term of this Agreement.
6.3 Termination of the Agreement may occur upon the following:
(a) Upon a material breach of the Agreement by the other Party.
In the event that a Party wishes to terminate this Agreement due to a
material breach, the terminating Party shall serve a written notice on
the other Party thereby allowing the other Party sixty (60) days to
remedy such breach. In the event that such breach has not been remedied
within the prescribed sixty (60) days, the Agreement shall terminate
automatically;
(b) In the event that either Party becomes subject to Bankruptcy,
insolvency, liquidation or similar proceedings, the other Party shall be
entitled to terminate this Agreement forthwith;
(c) Upon one-hundred eighty (180) days notice by GCI to
ProdiGene; or
(d) Upon failure of the Parties to reach and successfully
consummate the sale of an equity interest in ProdiGene to GCI within
one-hundred eighty (180) days of the Effective Date, GCI shall have the
right, but not the obligation, to terminate immediately, provided that
GCI must provide notice to ProdiGene of such termination within two
hundred and ten (210) days of the Effective Date. In the event that GCI
terminates under this subsection 6.3(d) and the failure of the Parties
to reach and successfully consummate the sale of an equity interest is
due to: (i) a failure of ProdiGene to obtain the necessary consents of
its shareholders and/or Board of Directors to effectuate such sale to
GCI or (ii) the terms of such issuance not being substantially similar
to the Class B Convertible Preferred Shares rights, privileges and
preferences as provided in ProdiGene's Certificate of Incorporation as
filed with the Delaware Secretary of State and authenticated on August
28, 1998, ProdiGene shall refund, in its entirety, any payments made
under Section 5.4 hereof.
6.4 Expiration of Term or termination of this Agreement pursuant to this
Article shall not effect the vested rights of either Party under Articles 2, 4
and 7.
VII. MISCELLANEOUS
7.1 Hold Harmless. With respect to GCI's rights under Section 2.7(c),
ProdiGene shall hold GCI harmless for any activities thereunder which would
otherwise infringe ProdiGene's Background Technology or Background Patent
Rights.
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7.2 Indemnification. Except as specifically provided herein, GCI agrees
to indemnify and to hold ProdiGene, its officers, directors, and employees
harmless from liabilities assessed to GCI or its affiliates which arise solely
as a result of GCI's conduct under this Agreement or GCI's use of the results of
this Agreement, except for liabilities caused by the negligence of ProdiGene.
Furthermore, ProdiGene agrees to indemnify and to hold GCI, its officers,
directors, and employees harmless from liabilities of any kind assessed to
ProdiGene or its affiliates which arise solely as a result of ProdiGene's
conduct under this Agreement or ProdiGene's use of the results of this
Agreement, except for liabilities caused by the negligence of GCI.
Indemnification hereunder is limited to research activities conducted under this
Agreement.
7.3 Force Majeure. Each of the Parties hereto shall be excused from
performance of its obligations and shall not be liable for damages to the other
to the extent that such performance is prevented by circumstances beyond its
effective control. Such excuse from performance shall continue so long as the
condition responsible for such excuse continues and for a thirty (30) day period
thereafter.
For purposes of this Agreement, circumstances beyond the effective
control of a Party which excuse that Party from performance shall include but
shall not be limited to, act of God, regulations or laws of any government,
injunction or judgment of any court, war, civil commotion, destruction of
facility or materials by fire, earthquake, storm or other casualty, labor
disturbance, epidemic and failure of public utilities or common carrier.
7.4 Relationship. ProdiGene and GCI are independent contractors. Nothing
in this Agreement or the course of dealing of the Parties shall be construed to
constitute the Parties hereto as partners, joint ventures or as agents or
distributors for one another, or as authorizing any Party to obligate the other
in any manner.
7.5 Non-Assignment. This Agreement shall not be assignable by any Party
without the other Parties' prior written consent. In the event that such consent
is given, this Agreement and the covenants herein contained shall be binding and
inure to the benefit of ProdiGene and GCI and their heirs, assigns, successors
and legal representatives. In the event that either Party hereto undergoes a
divestiture or sale of assets or equity to a third party, the acquiring party
takes such assets or equity subject to the rights and obligations provided in
this Agreement and shall agree in writing to the terms hereof.
7.6 Entire Agreement/Amendment. This Agreement and the attachments
hereto constitute and contain the entire agreement of the Parties respecting the
subject matter hereof. This Agreement may only be amended by mutual written
agreement of the Parties.
7.7 Warranty of Right and Authority. Each of the Parties represents and
warrants to the other that it has the full right and authority to enter into
this Agreement, and that it is
13
14
not aware of any impediment which would inhibit its ability to perform the terms
and conditions imposed on it by this Agreement. Nothing contained herein shall
be interpreted as a warranty, express or implied as to the patentability,
enforceability or validity of any patent application or patent owned or
controlled by either Party.
7.8 Further Acts and Instruments. Each Party agrees to execute,
acknowledge and deliver such further instruments and do all such other acts as
may be necessary or appropriate to effect the purpose and intent of this
Agreement.
7.9 Severability. In the event 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 or either of the Parties hereto to be invalid,
illegal or unenforceable, such provision shall be reformed within the
jurisdiction of such court or authority to as nearly approximate the intent of
the parties as possible, and if the provision is unreformable the Parties shall
meet to discuss what steps should be taken to remedy the situation; otherwise
and elsewhere this Agreement shall not be affected.
7.10 Captions. The captions to this Agreement are for convenience only
and are to be of no force or effect in construing or interpreting the provisions
of this Agreement.
7.11 Counterparts. This Agreement may be executed in two counterparts,
each of which shall be deemed an original, but all of which together shall
constitute one and the same instrument.
7.12 Limitation of Liability. No Party shall be liable to another for
indirect, incidental, consequential or special damages, including but not
limited to lost profits, arising from or relating to any breach of this
Agreement, regardless of any notice of the possibility of such damages. In no
event shall either Party be liable for damages relating to lost profits or
reasonable royalties or special damages due and payable to a third party on the
basis of the other's sale of a product developed hereunder.
7.13 Publicity. Either Party's use of the other Party's name or
disclosure of the existence or nature of this Agreement or the relationship
created thereby to any third party shall be only with the prior written consent
of the other Party, which consent will not be unreasonably withheld.
7.14 Interpretation. This Agreement has been jointly prepared by the
Parties and their respective legal counsel and shall not be strictly construed
against either Party.
7.15 Notices. Representatives for the receipt of payments, notices,
records, reports and other information pursuant to this agreement shall be as
follows:
14
15
For GCI:
Attn: Legal Department
Genencor International, Inc.
▇▇▇▇ ▇. ▇▇▇▇▇▇ ▇▇.
▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
For ProdiGene:
Attn:
ProdiGene, Inc.
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇
7.16 Controlling Law. This Agreement shall be governed and construed in
accordance with the Laws of the State of Delaware, excluding any choice of law
rules which may direct the application of the law of any other jurisdiction.
Questions effecting the construction and effect of any patent rights arising
hereunder shall be determined by the laws of the country in which such patent
rights have been applied for and/or granted.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives.
GENENCOR INTERNATIONAL, INC. PRODIGENE
By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇
-------------------------------- -----------------------------
Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ Name: ▇▇▇▇ ▇. ▇▇▇▇▇▇
------------------------------ ---------------------------
Title: Senior Vice President Title: President and CEO
----------------------------- --------------------------
15
16
APPENDIX A
CONFIDENTIALITY AGREEMENT
THIS AGREEMENT, effective this 25th day of March, 1997 ("Effective Date"), by
and between ProdiGene, Inc., and Genencor International, Inc.
WHEREAS, the Parties to this Agreement desire that certain confidential
information and associated documents be disclosed to each other in connection
with discussions regarding a business proposal to start a company which will
produce protein products in plants, and the Parties wish to ensure that the
information which may be disclosed is treated in the strictest confidence.
THE PARTIES AGREE AS FOLLOWS
1. "Confidential information" shall include, but not be limited to, all
knowledge, know-how, practices, processes, data and related information
received from the other party, whether such information is supplied to
the other party in oral, written, graphic, photographic or other
tangible form.
2. The receiving party shall not provide the confidential information, or
any part thereof, received from the disclosing party to any third party,
even if such third party is under obligations of confidentiality.
3. The receiving party shall not use the confidential information, or any
part thereof, received from the disclosing party for any purpose except
as contemplated herein; provided, however, that to be subject to the
confidentiality and non-use provisions
17
of this agreement, information disclosed other than in written or
tangible form must be summarized with particularity in writing by the
disclosing party and furnished to the other party within thirty days of
first disclosure hereunder.
4. Confidential information supplied shall not be reproduced in any form
except as required to accomplish the intent of this agreement.
5. Unless otherwise specified in writing, all documents and materials
containing or embodying confidential information shall remain the
property of the disclosing party. Upon request of the disclosing party,
the receiving party agrees to return or destroy all documents and
materials containing or embodying any confidential information of the
disclosing party, as well as copies thereof, except for one copy, which
disclosing party may keep in its legal department solely to monitor its
obligations hereunder.
6. The foregoing provisions of confidentiality shall not apply to
confidential information which:
a) is now, or which hereafter, through no act or failure to act on
the part of the receiving Party, becomes generally known or
available to the public without breach of this Agreement;
b) is known to the receiving Party at the time of disclosure of such
Confidential Information, as evidenced by the written record of
the receiving Party;
c) is independently developed by the receiving Party, provided that
the person or persons developing same have not received, either
directly or indirectly, the Confidential Information received and
provided such independent development is documented;
d) is disclosed with the written approval of the disclosing Party;
e) is required to be disclosed by law; provided that the party
subject to such requirement shall immediately inform the other
party and cooperate with the other party, at the other party's
expense, in interposing an objection so such requirement;
f) is rightfully received by the Receiving Party from a third party
without a duty of confidentiality; or
g) is disclosed by the Disclosing Party to a third party without a
duty of confidentiality on the third party.
7. Notwithstanding any termination of this Agreement the provisions of
confidentiality shall apply for a period of five (5) years from the
Effective Date.
18
8. This Agreement shall in no way be construed as the granting of a license
to the receiving Party, either directly or indirectly, under any
Intellectual Property and/or Technical Materials owned or controlled by
the disclosing Party. For the purposes of this Agreement, Intellectual
Property shall be defined as patents, patent applications, Plant Variety
Protection Certificates and/or copyrights and any inventions,
improvements and/or discoveries whether or not patentable, including all
know-how, show-how, trade secrets, research plans and priorities, market
interests and product ideas. Technical Material shall be defined as
computer software, computer simulations, computer models and related
reports, arrays, germplasm, cultures, cell lines, plants, plant parts,
seeds, pollen, proteins, peptides, and metabolites, DNA and RNA
sequences, genes, probes and plasmids. Furthermore, nothing in this
Agreement shall be interpreted so as to oblige either Party to enter
into a further agreement. Neither party has any obligation under this
Agreement to purchase any service or item from the other party, or to
deal exclusively with the other party in any field.
9. This Agreement is not assignable without the consent in writing of both
Parties.
10. The parties do not intend to create any agency or partnership between
them by this Agreement.
11. A receiving party shall adhere to the U.S. Export Administration Laws
and Regulations and shall not export or re-import any technical data or
products received from the disclosing Party or the direct products of
such technical data to any prescribed country listed in the U.S. Export
Administration Regulations unless properly authorized by the U.S.
Government.
12. The Parties agree to inform all personnel receiving the Confidential
Information of the terms of this Agreement.
13. This Agreement is made under and shall be construed according to the
laws of the State of New York.
PRODIGENE, INC. GENENCOR INTERNATIONAL, INC.
By: /s/ ▇▇▇▇▇▇ ▇. DOSE By: /s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇
------------------------ ---------------------------
▇▇▇▇▇▇ ▇. Dose
Executive Vice President
▇▇▇▇▇ ▇▇▇▇▇▇▇
-----------------------------------
Printed Name
Sr. Vice President, Research &
Development Title
Date: 3/25/97 Date: May 1, 1997
19
AMENDMENT TO CONFIDENTIALITY AGREEMENT
THIS AGREEMENT, made by and between ProdiGene, Inc., and Genencor
International, Inc. (the "Parties").
WHEREAS, the Parties have entered into a Confidentiality Agreement dated March
25, 1997 (the "Confidentiality Agreement") covering information and associated
documents which are disclosed in connections with discussions regarding a
business proposal to start a company which will produce protein products in
plants;
WHEREAS, as a part of those discussions, Genencor desires to review and analyze
certain information of ProdiGene comprising unpublished Patent Applications and
privileged Attorney Opinions;
NOW THEREFORE, the Parties agree to amend the Confidentiality Agreement as
follows:
1. Confidentiality with respect to the Patent Applications will extend for
ten years from the Effective Date.
2. Attorney Opinions will be maintained solely within the Legal Department
of Genencor.
3. Except as specifically indicated herein, the Confidentiality Agreement
remains unmodified in all other respects.
IN WITNESS WHEREOF, the Parties have caused this Amendment to be executed by
their authorized representative and effective as of the date of signature.
GENENCOR INTERNATIONAL, INC. PRODIGENE, INC.
Address: Address:
▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
1870 South ▇▇▇▇▇▇ Road College Station, Texas 77845
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
By: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇
-------------------------------- ------------------------------
▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ ▇▇▇▇ ▇. ▇▇▇▇▇▇
Title: Sr. Vice President, Technology Title: President
------------------------------ ---------------------------
Date: 7/28/97 Date: 8/4/97
------------------------------- ---------------------------
▇▇
▇▇▇▇▇▇▇▇ ▇
AGREEMENT FOR PROVISION OF SAMPLES
This Agreement, entered into this 30th day of April, 1997,
("Effective Date"), by and between GENENCOR INTERNATIONAL INC., a corporation of
the State of Delaware, having a principal place of business at ▇ ▇▇▇▇▇▇▇▇▇
▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇., ▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇ ("GENENCOR"); and
PRODIGENE, a corporation having a place of business at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇ ("PRODIGENE")(collectively the
"Parties").
WITNESSETH:
WHEREAS, GENENCOR has developed certain technology related to
identification, expression, secretion, purification and of enzymes and proteins
derived from plant, animal and microbial sources, including DNA which encodes
such enzymes and proteins and PRODIGENE has developed certain technology related
to the expression of certain DNA encoding proteins in plants;
WHEREAS, the Parties are desirous of working together for the
purpose of determining the usefulness of PRODIGENE's plant expression technology
to express GENENCOR's DNA and wish to effect transfer of GENENCOR's DNA (the
"SAMPLES") to PRODIGENE to facilitate initial experimentation and analysis
related thereto (the "EVALUATION");
WHEREAS, after initial analysis of the SAMPLES for suitability in
PRODIGENE's plant expression systems, the Parties are hopeful of discussing the
suitability of a longer term relationship, and the possibility of a business
relationship between the Parties directed to commercial scale expression of
GENENCOR's DNA to produce proteins in plants;
NOW, THEREFORE, the parties agree as follows:
1. GENENCOR shall provide the SAMPLES to PRODIGENE for the purposes of the
EVALUATION on a non-exclusive basis. Any material, including any cell,
vehicles, constructs, vectors, plasmids, protein or other medium
incorporating the SAMPLES or a component thereof, as well as any
material that could not have been made but for the SAMPLES, are
expressly understood to be part of the SAMPLES, together with all
documentation and descriptions of the SAMPLES.
2. a. PRODIGENE agrees not to supply the SAMPLES to other laboratories,
either within or outside of PRODIGENE, nor to any other
individual or organization other than employees of PRODIGENE, and
not to use the SAMPLES directly or indirectly, for any commercial
purpose, including the filing of a patent application, without
GENENCOR's prior written approval. Any employees of PRODIGENE
having access to SAMPLES will be previously notified of and agree
to be bound by the terms of this Agreement. No employee or third
party will be allowed access to the
21
SAMPLES unless such employee or third party is bound by an
employment, confidentiality or other agreement requiring
assignment of all invention, patents, and copyrights to
PRODIGENE.
b. PRODIGENE will not use, directly or indirectly, the SAMPLES in
any research programs without GENENCOR's prior written approval
if the terms of such program entitles any third party to any
right, option or interest in such research program or its
results, including the right to review and/or publish such
results.
3. a. PRODIGENE's EVALUATION of the SAMPLES will be only for research
purposes and particularly only for the following research
purposes: TESTING OF THE SUITABILITY OF GENENCOR'S DNA IN
PRODIGENE'S PLANT EXPRESSION SYSTEMS.
b. Upon GENENCOR's request, PRODIGENE will provide a list of all
individuals allowed access to the SAMPLES.
c. PRODIGENE acknowledges that the SAMPLES are the confidential and
proprietary property of GENENCOR and agrees to take all care
necessary to prevent any disclosure, unauthorized use or transfer
of the SAMPLES, or any information relating to such, to any party
who is not bound by this Agreement.
4. PRODIGENE will not analyze, attempt to analyze, or have analyzed the
composition or formulation of the SAMPLES to identify or reverse
engineer the composition of the SAMPLES or production systems thereof,
except as necessary under this Agreement.
5. PRODIGENE will not publish or publicly disclose results of experiments
using the SAMPLES without the prior written consent of GENENCOR. If the
research utilizing the SAMPLES results in a useful discovery, whether
patentable or not, made as a result of PRODIGENE's research using the
SAMPLES, PRODIGENE will promptly notify GENENCOR in writing.
6. It is specifically contemplated that confidential information of both
Parties may be disclosed pursuant to this Agreement, including data and
information relating to the SAMPLES, the EVALUATION and/or technical or
commercial information related thereto (the INFORMATION). Such
confidential information shall be treated as Confidential Information as
per the Confidentiality Agreement between the Parties having an
Effective Date of March 25, 1997.
7. At the conclusion of the EVALUATION, the Parties shall discuss the
possibility of a definitive agreement involving using PRODIGENE's plant
expression technology to produce enzyme and protein products for
GENENCOR on a commercial scale. Such discussions may include the
creation of a research and development agreement for applying
PRODIGENE's plant expression technology to GENENCOR's business and may
include provisions for GENENCOR
22
receiving exclusive rights to PRODIGENE's technology, the selection of
specific products to be developed by the Parties, seed production and
supply, extraction/purification and packaging, specific intellectual
property provisions related to the research to be undertaken, and
royalties or other mutually agreed upon consideration between the
Parties.
8. In consideration for GENENCOR's supply of SAMPLES hereunder, PRODIGENE
grants GENENCOR a non-exclusive, royalty-free license for internal
research purposes to each useful discovery, whether patentable or not,
made as a result of PRODIGENE's research using the SAMPLES. Furthermore,
PRODIGENE hereby grants GENENCOR a first right of refusal to obtain an
exclusive, worldwide, royalty-bearing license under any discovery and
any patents based on inventions using the SAMPLES, the royalty rate to
be a reasonable royalty determined based on the nature of the discovery,
taking into consideration its relative contribution to the overall
products(s) to be commercialized under such license. The royalty, along
with such other standard terms and conditions as may be reasonable under
the circumstances, shall be negotiated in good faith by the parties and
documented in a written agreement. PRODIGENE's obligations under this
provision are limited by the legal ability of PRODIGENE to grant
licenses to such inventions as of the Effective Date hereof.
9. The SAMPLES are experimental in nature and are not for human use.
PRODIGENE agrees to handle the SAMPLES with appropriate safety
precautions. GENENCOR will supply any available Material Safety Data
Sheet (MSDS) for the SAMPLES and PRODIGENE will follow all handling
precautions shown there. GENENCOR hereby disclaims all express and
implied warranties of any kind with respect to the SAMPLES. PRODIGENE
agrees to hold GENENCOR harmless from any and all liability and/or
damages (including costs of defense) resulting from your use of the
SAMPLES, including any use in violation of this Agreement.
10. Nothing contained in this Agreement shall be construed as granting a
license or other right to PRODIGENE under any proprietary rights of
GENENCOR or of granting a license or other right to GENENCOR under any
proprietary rights of PRODIGENE.
11. The EVALUATION of the SAMPLES under this Agreement shall be for a period
of eighteen (18) months from the Effective Date. At the conclusion of
the EVALUATION, PRODIGENE will, upon written request of GENENCOR, either
return or destroy any unused SAMPLES, at GENENCOR's option.
12. The parties' obligations under this Agreement shall extend for five (5)
years from the Effective Date hereof.
13. All additions or modifications of this Agreement must be made in writing
and must be signed by both Parties. This Agreement is made under and
shall be construed according to the laws of the State of New York.
23
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their authorized representative and effective as of the Effective
Date.
GENENCOR INTERNATIONAL, INC. PRODIGENE
Address: Address:
▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
1870 South ▇▇▇▇▇▇ Road College Station, Texas 77845
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
By: /s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇ ▇. DOSE
------------------------------------ -----------------------------
▇▇▇▇▇▇ ▇. Dose
Sr. Vice President, Research &
Development Title Executive Vice President Title
----------------------------------------- ----------------------------------
Date: May 1, 1997 Date: May 7, 1997
---------------------------------- ---------------------------
24
APPENDIX C
PROJECT FORM
This Project Form is submitted under the Parties' Funded Research
Collaboration Agreement (the "Agreement") as a proposal for an Elected Research
Program. Capitalized terms in this form have the same meaning as in the
Agreement. Upon execution of this form by both Parties, this Project Form shall
establish an Elected Research Program.
I. Target Compound:
II. Technical Description of the Proposed Elected Research Program Including
Technical Milestones
III. Elected Research Program Field:
IV. Projected FTE Allocation: Total FTEs
------------------------- --------
FTEs in Year 1
--------
FTEs in Year 2
--------
FTEs in Year 3
--------
V. Projected Completion Date: ___/___/___
VI. Market Justification include consideration of market size, market
penetration, competitive alternatives, etc. . .)
VII. Technical Milestone Payments
