Exhibit 10.2
Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
Collaboration Agreement
between
Tilligen, Inc.
and
Senesco Technologies, Inc.
September 20, 2002
THIS IS AN AGREEMENT effective September 20, 2002, ("Effective Date") by
and between Tilligen, Inc., a Washington corporation having its principal place
of business at ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ("Tilligen") and Senesco
Technologies, Inc. ("Senesco"), a Delaware corporation having a principal place
of business at ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇.
Senesco has certain technologies related to controlling plant senescence by
altering the expression of plant genes and their cognate expressed proteins that
are induced during or coincident with the onset of senescence.
Tilligen has certain technologies relating to the generation and
identification of mutations in genes predictive of traits of interest.
Senesco and Tilligen are establishing a research alliance to develop and
commercialize certain improved varieties of [**] containing desirable Mutations
(hereinafter defined).
NOW, THEREFORE, in consideration of the mutual covenants and agreements
hereinafter set forth, the parties agree as follows:
1. DEFINITIONS
-----------
Terms in this Agreement defined in the singular have the same meanings when
used in the plural and vice versa. For purposes of this Agreement, the following
words and phrases shall have the following meanings:
1.1 "Affiliate" means with respect to any person or entity, any other
person or entity that directly or indirectly controls, is controlled by or is
under common control with such person or entity. A person or entity shall be
deemed to be "controlled" by any other person or entity if such other person or
entity (i) possesses, directly or indirectly, power to direct or cause the
direction of the management and policies of such person or entity whether by
contract or otherwise, (ii) has direct or indirect ownership of at least 50% (in
the aggregate) of the voting power of all outstanding shares entitled to vote at
a general election of directors of the person or entity or (iii) has direct or
indirect ownership of at least 50% of the equity interests in a partnership or a
limited liability company.
1.2 "Agreement" means this Collaboration Agreement.
1.3 "Contract Party" means a distributor, processor, packer or similar
party having a contractual relationship with Senesco ([**] in association with
its relationship with Senesco) pursuant to which Senesco ([**] in association
with its relationship with Senesco) permits such party to make, use, market,
distribute, import, sell or offer for sale any Licensed Product.
1.4 "Field" means [**] varieties of [**].
1
1.5 "Gene Target" means a gene chosen by the Collaboration Managers to be
analyzed by Tilligen for Mutations as provided for in the Research Plan.
1.6 "Intellectual Property" means all patents and patent applications
owned or controlled by a party or any of its Affiliates or under which a party
has a right to practice with the right to extend such right to practice, which
contain claims, the rights to which are necessary or useful for the development,
propagation, manufacture, use, sale or distribution of Licensed Products.
Intellectual Property will also include all inventions, discoveries, know-how,
trade secrets, information, experience, technical data, formulas, procedures or
results relating to the Licensed Products and which are necessary for purposes
of performing the Research Plan (including, without limitation, physical,
chemical, biological, toxicological, and pharmacological data, product forms and
formulations, and know-how relating to methods, processes or techniques for the
development, propagation, manufacture, use, sale or distribution of Licensed
Products or related products or materials), which are held by a party or its
Affiliates with right to license or sublicense during the term of this
Agreement, and which Intellectual Property is useful or necessary for the
development, propagation, manufacture, use, sale or distribution of Licensed
Products or for performing the Research Plan. Without limiting the foregoing, a
party's Intellectual Property will include the Tilligen Patents or Senesco
Patents, as the case may be.
1.7 "Joint Patents" is as defined in Section 6.1.
1.8 "Licensed Products" means germplasm and plants and plant products in
the Field consisting of, containing, or derived from a Mutation.
1.9 "Mutation" means a mutation of a Gene Target discovered or developed
by Tilligen in connection with the Research Plan.
1.10 "Net Revenues" means (a) the gross amount invoiced by Senesco [**]
respective Affiliates and sublicensees for the sale or other disposition of
Licensed Products to persons who are not Contract Parties, plus (b) the gross
amount invoiced by Contract Parties and their Affiliates for the sale or other
disposition of Licensed Products, in each case during the applicable period in
arm's length transactions after deduction of the following items, provided and
to the extent such items are actually incurred and do not exceed reasonable and
customary amounts in each market in which such sales occurred: (i) trade and
quantity discounts and rebates; (ii) credits or allowances made for rejection or
return of previously sold Licensed Products; and (iii) any tax or government
charge levied on the sale, such as value added tax (but not including income
tax). In the event that the Licensed Product is sold or otherwise transferred to
an Affiliate or a third party for a price lower than if it had been sold to a
third party in an arm's length transaction ("fair market value"), then Net
Revenues shall be the fair market value of the Licensed Products to an end-user
of the Licensed Product.
1.11 "Project Committee" is as defined in Section 3.4.
2
1.12 "Project Technology" means any materials, know-how, information,
discoveries or inventions that are discovered or developed in the course of
carrying out the Research Plan.
1.13 "Research Plan" means the plan attached as Appendix A, as amended from
time to time by the Project Committee pursuant to Section 3.3.
1.14 "Senesco Patents" is as defined in Section 7.1.
1.15 "Term" is as defined in Section 4.1
1.16 "Tilligen Patents" is as defined in Section 7.1.
2. CONVEYANCE OF RIGHTS.
---------------------
2.1 License to Senesco. Subject to the terms and conditions of this
--------------------
Agreement, Tilligen hereby grants to Senesco an exclusive, worldwide,
nontransferable royalty-bearing license under the Tilligen Intellectual Property
to make, use, sell, have sold and offer for sale Licensed Products in the Field.
This license shall be exclusive as to the Field, in that Tilligen will not use
the Tilligen Intellectual Property to develop or commercialize any products for
use in the Field, and will not grant any license to any third party to develop
or commercialize products for use in the Field. The foregoing license does not,
however, prohibit Tilligen from using the Tilligen Intellectual Property for its
own internal research and development purposes or to develop and commercialize
products outside the Field.
2.2 License to Tilligen. Subject to the terms and conditions of this
---------------------
Agreement, Senesco hereby grants to Tilligen a non-exclusive, fully-paid,
royalty-free, license in the Field to use the Senesco Intellectual Property in
the United States and Canada during the Term for internal purposes only as
necessary for and in connection with Tilligen's performance under this Agreement
and the Research Plan. The term of this license under the Senesco Intellectual
Property ends at the conclusion of Tilligen's completion of its obligations
under the Research Agreement, unless earlier terminated pursuant to Section 4.
2.3 Restrictions on Licenses. Nothing in this Agreement shall be construed
------------------------
as granting a license under any intellectual property or other rights other than
intellectual property or other rights identified in this Agreement, and in no
event shall anything in this Agreement be construed as granting a license under
any intellectual property or other right which any such party is, as of the
Effective Date or during the Term of this Agreement, prohibited, contractually
or otherwise, from granting.
2.4 Sublicense Rights. Senesco may sublicense its rights under Section 2.1
-----------------
only with the prior written consent of Tilligen, which consent will not be
unreasonably withheld or delayed. Notwithstanding any such consent, any such
sublicense shall be consistent with all of the terms and conditions of this
Agreement, and subordinate thereto. Senesco shall remain responsible to Tilligen
for all obligations arising under this
3
Agreement based on the development, sales, distribution and other activities of
each such sublicensee.
3. RESEARCH PLAN.
-------------
3.1 Research Plan. Subject to the terms and conditions set forth herein,
--------------
each of Senesco and Tilligen shall conduct the collaboration pursuant to the
Research Plan, as attached hereto or as amended by the Project Committee, and in
compliance with this Agreement.
3.2 General Contribution of the Parties. Senesco and Tilligen shall use
-------------------------------------
diligent efforts to conduct their respective obligations under the Research
Plan.
3.3 Project Committee. The Research Plan will be managed by a Project
------------------
Committee of four, consisting of one (1) Executive Sponsor and one (1)
Collaboration Manager from each party. The Project Committee will coordinate and
expedite the design, development, and implementation of activities that are
necessary to fulfill the purposes of the collaboration, including the evaluation
and selection of Gene Targets. Each party may, in its sole discretion, replace
the assigned individuals at any time as necessary, by providing written notice
to the other party of such change.
3.3.1 Executive Sponsors. The initial Executive Sponsors shall be
-------------------
▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ of Senesco and ▇▇▇ ▇▇▇▇▇ of Tilligen. The Executive Sponsors
shall have the following specific responsibilities:
(a) approving the Research Plan and any amendments or changes
thereto;
(b) settling disputes or disagreements that cannot be resolved
by the Collaboration Managers; and
(c) performing such other functions as appropriate to further
the purposes of the collaboration as agreed by the parties.
3.3.2 Collaboration Managers. The initial Collaboration Managers
-----------------------
shall be ▇▇▇▇ ▇▇▇▇▇▇▇▇ of Senesco and ▇▇▇▇▇ ▇▇▇▇▇ of Tilligen. The Collaboration
Managers shall have general responsibility for preparation of the Research Plan
and the design, development, and implementation of activities that will fulfill
the objectives of the collaboration as expeditiously as practicable. The
Collaboration Managers shall also have the following specific responsibilities:
(a) updating and revising the Research Plan quarterly or as
mutually agreed;
(b) monitoring and reviewing the progress of research,
development, and implementation of collaboration activities in order to ensure
that satisfactory progress is being made with respect to the execution of the
Research Plan;
4
(c) discussing and agreeing upon remedial measures if a
Collaboration Manager determines that the progress in respect of implementation
of a Research Plan activity is unsatisfactory;
(d) settling disputes or disagreements related to the Research
Plan; and
(e) performing such other functions as appropriate to further
the purposes of the collaboration as agreed by the parties.
3.3.3 Decision-making. Decisions of the Collaboration Managers shall
---------------
be made by unanimous vote, with each of Tilligen and Senesco having one vote. If
the Collaboration Managers become deadlocked on an issue, the issue shall be
presented to the Executive Sponsors for resolution. Other than the Research
Plan, the Project Committee may not modify this Agreement. Any decisions related
to material changes in the scope or the budget for the Research Plan or related
to changing the terms of this Agreement will require mutual consent of Tilligen
and Senesco.
3.3.4 Meetings. The Project Committee shall meet no less frequently
--------
than quarterly, as agreed upon by the Project Committee, but preferably at a
location that alternates between Tilligen's corporate headquarters and Senesco's
corporate headquarters. Responsibility for keeping the minutes of these meetings
shall alternate between the parties. The Project Committee will prepare
quarterly science reports and the minutes of the meetings will be approved by
both parties. In the event that Tilligen and Senesco become deadlocked on an
issue concerning this Agreement, this Agreement shall terminate as set forth in
Section 4.3.
4. TERMINATION
4.1 Term. This Agreement will begin on the Effective Date and, except as
----
set for in Section 2.2, will expire concurrently with the last to expire of any
patent contained in the Tilligen Intellectual Property or the Joint Intellectual
Property, unless earlier terminated as provided for herein (the "Term").
4.2 Termination For Failure to Meet a Material Term of the Research Plan.
---------------------------------------------------------------------
Subject to the provisions of Section 4.6, each of Senesco and Tilligen will have
the option to terminate this Agreement prior to the expiration of the Term if
the other party fails to meet any material term of the Research Plan. The
defaulting party will be given sixty (60) days from receipt of such written
notice to initiate cure of the failure pursuant to this Section 4.2 prior to
actual termination. If the defaulting party is making a good faith effort to
cure during such sixty (60) day period, then the party will be given an
additional sixty (60) days to complete the cure, for a total period of one
hundred twenty (120) days. If the default is cured during such period, the
notice will have no force or effect.
4.3 Termination due to Deadlock. Subject to the provisions of Section 4.6,
---------------------------
this Agreement shall terminate if the parties become deadlocked concerning a
material term of the Research Plan.
5
4.4 Early Termination - Other Reasons. Subject to the provisions of
------------------------------------
Section 4.6, either party, at its option and without prejudice to any of its
other legal and equitable rights and remedies, may terminate this Agreement by
reason of failure to cure a material breach by the other party, other than a
breach provided in Section 4.2, or upon bankruptcy, insolvency, and dissolution
or winding up of the other party. Any such termination will require written
notice from the terminating party, specifying, in reasonable detail, the breach
or other basis of the termination. If capable of being cured, the breaching
party will be given thirty (30) days from receipt of such written notice to cure
the breach pursuant to this Section 4.4 prior to actual termination. If the
breach is cured during such period, the notice will have no force or effect.
4.5 Surviving Paragraphs. Termination of this Agreement for any reason
---------------------
shall not terminate the provisions set forth in Sections 4.6, 6, 8, 9.3, 9.4,
9.5, 9.6, 10, 11.1 and 11.3. The rights and obligations of these Sections shall
continue in full force and effect following any such termination.
4.6 Actions on Termination.
----------------------
4.6.1 Return of Information and Things. Upon any termination of this
--------------------------------
Agreement, Tilligen agrees to return or permanently destroy, at Senesco's sole
discretion, all Senesco Confidential Information in Tilligen's possession.
Senesco agrees to return or permanently destroy, at Tilligen's sole discretion,
all Tilligen Confidential Information in Senesco's possession. If biological or
other material that comprises Joint Intellectual Property of Senesco and
Tilligen exists upon any termination of this Agreement, the parties will attempt
to negotiate a reasonable agreement as to how to dispose of such material.
4.6.2 Termination of License under Senesco Intellectual Property.
--------------------------------------------------------------
Upon termination of this Agreement for any reason, Tilligen's license under the
Senesco Intellectual Property pursuant to Section 2.2 is terminated.
4.6.3 Termination of License under Tilligen Intellectual Property and
---------------------------------------------------------------
Continuation of License Rights Vested. Upon termination if this Agreement
----------------------------------------
pursuant to Sections 4.2, 4.3, or 4.4 (other than a termination resulting from a
payment or similar default by Senesco, or a termination resulting from a
bankruptcy, insolvency, dissolution or winding up of Senesco), Senesco's license
under the Tilligen Intellectual Property granted in Section 2.1 will continue,
at Senesco's option, as to any and all Licensed Products for which a Gene
Mutation fee has been paid by Senesco to Tilligen pursuant to Section 5.1.2. As
to those Licensed Products for which a Gene Mutation fee has been paid, Senesco
will continue to be obligated to make the royalty and other payments to Tilligen
pursuant to Section 5 and the applicable provisions of this Agreement will
remain in full force and effect as to those Licensed Products Upon termination
pursuant to Sections 4.2, 4.3, and 4.4, Senesco's license under the Tilligen
Intellectual Property as to all other products in the Field is terminated.
5. PAYMENTS.
--------
6
5.1 Project Funding. Senesco agrees to fund the Research Plan as set forth
---------------
below. All payments set forth in this Section 4 shall be made in United States
dollars.
5.1.1 Initial Fee. Senesco agrees to pay Tilligen [**] dollars
-----------
($[**]) on or within five (5) days of the Effective Date. Except as otherwise
provided in this Section, the full amount of this initial fee shall be
guaranteed, non-refundable and non-creditable and shall be paid directly to
Tilligen.
5.1.2 Gene Mutation Fee. Upon delivery to Senesco of seeds containing
-----------------
a Mutation (and the DNA sequence information with respect thereto) for each Gene
Target identified pursuant to the Research Plan, Senesco shall pay Tilligen a
fee of [**] dollars ($[**]). Each such payment will be made within five (5) days
of delivery of such seeds.
5.2 Royalties and Other Payments - Licensed Products.
------------------------------------------------
5.2.1 Royalty Calculation. Senesco shall pay, and in the case of
--------------------
Contract Parties cause to be paid, to Tilligen [**] percent ([**]%) of the total
aggregate worldwide Net Revenue of all Licensed Products (for each Mutation
utilized therein) notwithstanding that the sale or other disposition of such
Licensed Products occurs in a jurisdiction in which Licensed Products are not
covered by a valid and enforceable Tilligen Patent or Joint Patent or the
corresponding pending patent applications
5.2.2 Sublicense of Tilligen Intellectual Property by Senesco. If
----------------------------------------------------------
Senesco grants a sublicense of Tilligen Intellectual Property to a third party
non-Affiliate without providing such sublicensee with a Licensed Product,
Senesco shall pay Tilligen [**] percent ([**]%) of any royalty-based payments
(or similar payments based upon per-unit sales of the Licensed Product) received
for or as a result of such sublicense by Senesco.
5.2.3 Non-Royalty Payments. In situations where the sublicensee does
--------------------
not pay a royalty, Senesco shall pay to Tilligen an amount equal to [**] percent
([**]%) of all non-royalty income (including, without limitation, license fees,
license maintenance fees and milestone payments, but not including equity
consideration or reimbursements for actual research and development costs
incurred by Senesco) received by Senesco from any sublicensees to the Tilligen
Intellectual Property ("Non-Royalty Payments"). Such Non-Royalty Payments shall
be paid on a calendar quarterly basis along with the payment of the foregoing
royalties, within thirty (30) days of the close of the calendar quarter in which
such Non-Royalty Payment was received.
5.2.4 Duration of Royalty Obligations. The royalty obligations of
--------------------------------
Senesco under Sections 5.2.1 and 5.2.2 as to each Licensed Product shall
terminate on a country-by-country basis concurrently with the expiration of the
last to expire of any patents contained in the Tilligen Intellectual Property
enforceable in each such country. For any country in which no patent issues
related to the Tilligen Intellectual Property, the
7
royalty obligations for such country shall terminate concurrently with the
expiration of the last to expire of any patents contained in the Tilligen
Intellectual Property.
5.2.5 License Maintenance Payments. In addition to the royalty and
------------------------------
other payments set forth in this Section 5.2, Senesco will pay to Tilligen an
annual license maintenance fee ("License Maintenance Fee") of [**] dollars
($[**]). The first such License Maintenance Fee shall be due twelve (12) months
following delivery by Tilligen of the first Mutation delivered to Senesco
hereunder, and on each subsequent anniversary thereof. The License Maintenance
Fee shall be creditable on a noncumulative annual basis against any royalties
owed to Tilligen hereunder.
6. RECORDS.
-------
6.1 Payments of Royalties. Within thirty (30) days of the end of the
-----------------------
applicable quarterly period (calendar) following the first commercial sale of a
Licensed Product and within thirty (30) days after the end of each quarterly
period thereafter, Senesco shall make a written report to Tilligen setting forth
the information, including that of Affiliates and sublicensees and Contract
Parties, necessary to permit Tilligen to calculate and confirm the royalty and
other payments due Tilligen, even if no payment is due. At the time each report
is made, Senesco shall pay or cause to be paid to Tilligen, or any Affiliate of
Tilligen as Tilligen may direct, the amounts shown by such report to be payable
hereunder. Payments due on sales in foreign currency shall be calculated in
United States dollars on the basis of the rate of exchange in effect for
purchase of dollars at Chase Manhattan Bank, New York, New York, on the last
business day of the last-preceding June or December, whichever shall be later.
Payments shall be without set off (except with respect the License Maintenance
Fee) and free and clear of any taxes, duties, fees or charges other than
withholding taxes, if any. Payment shall be made by wire transfer to an account
in the United States designated by Tilligen from time to time with prior written
notice.
6.2 Books and Records for Royalty and Non-Royalty Payments. Senesco shall
------------------------------------------------------
keep, and shall cause its Affiliates, sublicensees, and all Contract Parties to
keep, books and records in such reasonable detail as will permit the reports
provided for in this Section to be made and the royalties payable hereunder to
be determined. Senesco further agrees to permit its and its Affiliates' books
and records to be inspected and audited from time to time (but not more often
than once annually) during reasonable business hours by an independent auditor,
designated by Tilligen and approved by Senesco, which approval will not be
unreasonably withheld, to the extent necessary to verify the reports provided
for in this Section; provided, however, that such auditor shall indicate to
Tilligen only whether the reports and royalties paid are correct, and if not,
the reason why not. Senesco also agrees to cause all Contract Parties (pursuant
to the agreement under which they become Contract Parties of Senesco) to permit
their respective books and records to be inspected and audited from time to time
(but not more often than once annually) during reasonable business hours by an
independent auditor, designated by Tilligen and approved by them, which approval
will not be unreasonably withheld, to the extent necessary to verify the reports
required to be provided by Senesco in this Section; provided, however, that such
auditor shall indicate to Tilligen only
8
whether the amounts reported by Senesco are correct, and if not, the reason why
not. In the event that such an audit results in additional royalties being owed
to Tilligen, such royalties shall be paid within twenty (20) days from notice of
deficiency along with interest calculated as from the date the correct payment
was due to the date of actual payment at an annual rate of five (5) percentage
points above the prime rate quoted by Chase Manhattan Bank, New York, New York,
on the day payment was due, or at the greatest rate permitted by law, if lower,
until paid. If the original royalty payment was more than ten percent (10%) less
than it should have been, the cost of the audit shall be reimbursed by Senesco.
6.3 Late Payment. If any royalties or other amounts owed under this
-------------
Agreement are not paid when due, the unpaid amount shall bear interest,
compounded annually, at an annual rate of five (5) percentage points above the
prime rate quoted by Chase Manhattan Bank of New York on the day payment was due
or at the greatest rate permitted by law, if lower, until paid or offset.
7. INTELLECTUAL PROPERTY.
---------------------
7.1 Ownership of Intellectual Property. Except as set forth in this
-------------------------------------
Agreement: (i) any Project Technology and any patent applications and patents
claiming any Project Technology within or outside the Field first developed or
made by one or more employees of Senesco shall belong to Senesco ("Senesco
Patents"); (ii) any Project Technology and any patent applications and patents
claiming any Project Technology within or outside the Field first developed or
made by one or more employees of Tilligen shall belong to Tilligen ("Tilligen
Patents"); and (iii) any Project Technology and any patent applications and
patents claiming any Project Technology first developed or made jointly by one
or more employees of Senesco and one or more employees of Tilligen within or
outside the Field shall belong jointly to Senesco and Tilligen ("Joint
Patents"). Inventorship shall be determined in accordance with United States
patent laws.
7.2 Disclosure of Patentable Inventions. In addition to the disclosures
------------------------------------
otherwise required under this Agreement, each party shall submit a written
report to the other within forty-five (45) days of the end of each calendar
quarter summarizing any inventions arising in the performance of the Research
Plan during the quarterly period immediately preceding delivery of such report
which it believes may be patentable.
7.3 Patent Prosecution and Maintenance.
----------------------------------
(a) Tilligen Patents. Subject to Section 7.5, Tilligen shall control
-----------------
the prosecution and maintenance of the Tilligen Patents in its sole discretion.
If Tilligen intends to or does abandon any patent application without filing a
continuation of the same, or fails to maintain any issued patent in the Tilligen
Patents, in each case that claims a Licensed Product, Tilligen shall provide
Senesco notice thereof not less than two (2) months before any relevant
deadline, and thereafter Senesco shall have the right, but not the obligation,
to prosecute such patent at Senesco's expense and Tilligen agrees to cooperate
fully with Senesco in such prosecution, including by providing all appropriate
technical data, all appropriate files, and executing all necessary legal
documents.
9
(b) Joint Patents. The parties shall agree upon an outside law firm
--------------
who shall prepare, file, prosecute and maintain Joint Patents under the joint
instructions of the parties. All costs shall be shared equally. In the event
Tilligen or Senesco elects not to share or continue to share such costs of
prosecution of a filed application for a Joint Patent or maintenance costs for
an issued Joint Patent, it shall notify the other party not less than two (2)
months before any relevant deadline, and the other party shall have the right,
but not the obligation, to assume sole control over the prosecution of such
filed application for a Joint Patent or maintenance of such issued Joint Patent.
In such event, the party which assumes such control shall have title to such
Joint Patent and the other party agrees to execute the appropriate documents to
assign all of its right, title and interest in such patent to the other party.
(c) Senesco Patents. Senesco shall control the prosecution and
----------------
maintenance of the Senesco Patents in its sole discretion.
7.4 Cooperation. Each party agrees to cooperate with the other in
-----------
preparing and executing any documents necessary or useful to obtain patent
protection on any invention that is subject to this Agreement in any country in
the world.
7.5 Costs. Subject to Section6.3(a), Tilligen shall retain control over
-----
and bear all expenses associated with the filing, prosecution and maintenance of
the Tilligen Patents and patents included in the Tilligen Intellectual Property,
except to the extent that such expenses relate to the prosecution and
maintenance of Tilligen Intellectual Property outside the United States
undertaken at the request of Senesco, in which event all such expenses will be
paid or reimbursed by Senesco, provided, however, in the event that Senesco
intends to or does abandon any such patent application without filing a
continuation of the same, or fails to maintain any such issued patent in the
Tilligen Patents, Senesco shall provide Tilligen notice thereof not less than
two (2) months before any relevant deadline, and thereafter none of Senesco, its
Affiliates, sublicensees, or any Contract Party shall have any rights to
develop, propagate, manufacture, use, sell, have sold, offer for sale or
distribute in such jurisdiction any Licensed Product. Senesco shall retain
control over and bear all expenses associated with the filing, prosecution and
maintenance of the Senesco Patents and patents included in the Senesco
Intellectual Property.
7.6 Patent Litigation: Right to Bring Suit. Each party shall have the
-----------------------------------------
power to institute and prosecute at its sole discretion and expense suits for
infringement of their respective patent rights. Each party agrees to cooperate
with the other in any suit brought under this Section. All expenses in such
suits will be borne entirely by the party bringing such suit and such party
shall collect all judgments or awards arising from these suits.
7.7 Patent Litigation: Jointly Owned Patents. In the event that any Joint
-----------------------------------------
Patent is infringed or misappropriated by a third party, Senesco and Tilligen
shall discuss whether, and, if so, how, to enforce such Joint Patent or to
defend such Joint Patent in an infringement action, declaratory judgment action
or other proceeding. In the event only one party wishes to participate in such
proceeding, it shall have the right to proceed alone, at its expense, and may
retain any recovery; provided that, at the request and
10
expense of the participating party, the other party agrees to cooperate and join
in any proceedings in the event that a third party asserts that the co-owner of
such Joint Patent is necessary or indispensable to such proceeding.
8. CONFIDENTIALITY.
---------------
8.1 Definition. As used herein, "Confidential Information" means any
----------
information of a party disclosed by that party to the other party pursuant to
such other parties' written request describing in detail the information
necessary to accomplish the goals of this Agreement and the Research Plan and
which is in written, graphic, machine readable or other tangible form and is
marked "Confidential," "Proprietary" or in some other manner to indicate its
confidential nature. Confidential Information also includes oral information
disclosed by one party to the other pursuant to such written request, provided
that such information is indicated to be confidential at the time of disclosure
and is reduced to writing by the disclosing party within a reasonable time (not
to exceed thirty (30) days) after its oral disclosure, and such writing is
marked in a manner to indicate its confidential nature and delivered to the
receiving party. Notwithstanding any failure to so identify it, all nonpublic
Intellectual Property of each party shall be considered the Confidential
Information of such party. Each party shall retain sole and exclusive ownership,
right, title and interest in and to all of its Confidential Information.
8.2 Obligations. Should either party disclose to the other any of such
-----------
party's Confidential Information (the "Disclosing Party"), the party receiving
the Confidential Information (the "Receiving Party") shall maintain the
Confidential Information in confidence, shall use at least the same degree of
care to maintain the secrecy of the Confidential Information as it uses in
maintaining the secrecy of its own proprietary, confidential and trade secret
information, shall always use at least a reasonable degree of care in
maintaining the secrecy of the Confidential Information, shall use the
Confidential Information only for the purpose of performing its obligations
under this Agreement and the Research Plan and exercising its rights hereunder
unless otherwise agreed in writing by the Disclosing Party, and shall deliver to
the Disclosing Party, in accordance with any request from the Disclosing Party,
all copies, notes, packages, diagrams, computer memory media and all other
materials containing any portion of the Disclosing Party's Confidential
Information which is not necessary for the Receiving Party to perform its
obligations under this Agreement and the Research Plan and to exercise its
rights hereunder. The Receiving Party shall not disclose any of the Disclosing
Party's Confidential Information to any person except to those Receiving Party
Affiliates, employees and consultants having a need to know such Confidential
Information in order to accomplish the purposes and intent of this Agreement and
the Research Plan. Such disclosure shall not be made until the Disclosing Party
is notified and consents to the disclosure, such consent not to be unreasonably
withheld. The Receiving Party shall ensure that each such Affiliate, employee
and consultant has been instructed to keep confidential the Confidential
Information of the Disclosing Party and shall ensure that each such Affiliate,
employee or consultant has signed a confidentiality agreement prepared by the
Disclosing Party covering the Confidential Information of the Disclosing Party.
11
8.3 Exceptions. A Receiving Party shall not have any obligation with
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respect to any portion of Confidential Information of the Disclosing Party which
the Receiving Party is able to demonstrate (i) was known by the Receiving Party
at the time of disclosure by the Disclosing Party, as evidenced by written
records of the Receiving Party, (ii) has become publicly known and made
generally available through no wrongful act of the Receiving Party, (iii) is
outside the scope of the written request pursuant to which such Confidential
Information was initially disclosed, or (iv) has rightfully been received by the
Receiving Party from a third party under no obligation to the Disclosing Party
to keep such information confidential. Notwithstanding Section 8.2, a Receiving
Party may disclose the Confidential Information of the Disclosing Party pursuant
to a subpoena or other legal process, provided that the Disclosing Party is
provided prior notice reasonably sufficient to permit the Disclosing Party to
obtain a protective order and provided further that such disclosure shall not
relieve the Receiving Party from future adherence to Section 8.1 with respect to
such Confidential Information.
8.4 Reservation. Unless expressly provided for in this Agreement, a
-----------
Disclosing Party shall retain all rights, title and interest in its Confidential
Information, and in no event will a Receiving Party have any license or right to
a Disclosing Party's Confidential Information outside the Field.
8.5 Agreement as Confidential Information. Neither party shall issue a
---------------------------------------
press release or other publicity announcing the existence of this Agreement or
the relationship between the parties or disclose the terms and conditions of the
Agreement to any third party, without the prior written consent of the other
party; except each party may disclose the terms and conditions of this
Agreement: (i) as required by any court or other governmental body; (ii) as
otherwise required by law; (iii) to legal counsel of the parties; (iv) in
confidence, to accountants, banks, and financing sources and their advisors
solely for the purposes of a party's securing financing; (v) in connection with
the enforcement of this Agreement or rights under this Agreement; or (vi) in
confidence, in connection with an actual or proposed merger, acquisition, or
similar transaction solely for use in the due diligence investigation in
connection with such transaction.
8.6 Publications and Disclosure. The parties hereby agree that the results
---------------------------
obtained in the course of performing under the Research Plan may not be
published or otherwise disclosed without the express prior written approval of
the Executive Sponsors, except in connection with the pursuit and maintenance of
patent rights.
9. REPRESENTATION AND WARRANTIES; INDEMNIFICATION AND LIMITATION OF LIABILITY.
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9.1 Senesco. Senesco represents and warrants that to the best of its
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knowledge it has the right to make conveyances and grants in accordance with
this Agreement, including, without limitation, that Senesco is free to conduct
the Research Plan.
12
9.2 Tilligen. Tilligen represents and warrants that to the best of its
--------
knowledge it has the right to make conveyances and grants in accordance with
this Agreement, including, without limitation, that Tilligen is free to conduct
the Research Plan.
9.3 Indemnification by Tilligen. Tilligen shall indemnify and hold
-----------------------------
harmless Senesco, its Affiliates, and all their officers, directors, employees
and agents, for any losses, claims, damages, judgments, assessments, costs and
other liabilities, including reasonable out-of-pocket costs and expenses as they
are incurred by Senesco in connection with any demands, law suits and other
legal actions by third parties against Senesco arising from (i) the infringement
or alleged infringement of any patent, trade secret or other intellectual
property right of any third party as a result of the use of Tilligen
Intellectual Property in accordance with the Research Plan, or (ii) any gross
negligence or willful misconduct by or of Tilligen, its Affiliates, agents or
sublicensees.
9.4 Indemnification by Senesco. Senesco shall, except to the extent caused
--------------------------
by Tilligen's gross negligence or willful misconduct, indemnify and hold
harmless Tilligen, its Affiliates, and all their officers, directors, employees
and agents, for any losses, claims, damages, judgments, assessments, costs and
other liabilities, including reasonable out-of-pocket costs and expenses as they
are incurred by Tilligen in connection with any demands, law suits and other
legal actions by third parties against Tilligen arising out of or alleged to
arise out of (I) the propagation, manufacture, use, distribution or sale by
Senesco, any Senesco Affiliate, or any Senesco sublicensee or Contract Party of
any Licensed Product or any other product or service covered by Senesco
Intellectual Property; (ii) the infringement or alleged infringement of any
patent, trade secret or other intellectual property right of any third party as
a result of the use of Senesco Intellectual Property in accordance with the
Research Plan; or (iii) any gross negligence or willful misconduct by or of
Senesco, its Affiliates, agents or sublicensees.
9.5 Conditions and Limitations of Indemnification Obligation.
--------------------------------------------------------
(a) In order to maintain the right to be indemnified by the other
party ("Indemnitor"), the party claiming indemnification ("Indemnitee") must:
(i) notify the Indemnitor promptly after learning of any legal
action undertaken by a third party and related to the subject matter of this
Section 9 (a "Third Party Claim");
(ii) allow the Indemnitor to manage and control (by way of
intervention or otherwise) the defense and settlement of any such Third Party
Claim against the Indemnitee;
(iii) cooperate with the Indemnitor in the defense or the
settlement negotiations of Third Party Claims as reasonable required by the
Indemnitor; and
(iv) abstain from making any statements or taking any actions
which damage the defense against a Third Party Claim (including, without
limitation, any statements against the interest of the Indemnitee or admissions
of causation or guilt).
13
(b) The Indemnitor shall not agree to any settlement that adversely
affects the Indemnitee's rights or interest without the Indemnitee's prior
written approval (which approval shall not be unreasonably withheld).
9.6 Limitation of Liability. EXCEPT WITH RESPECT TO THE INDEMNIFICATION
------------------------
OBLIGATIONS SET FORTH HEREIN, NEITHER PARTY WILL BE LIABLE TO THE OTHER WITH
RESPECT TO THE SUBJECT MATTER OF THIS AGREEMENT FOR ANY INCIDENTAL, INDIRECT,
CONSEQUENTIAL, SPECIAL, OR PUNITIVE DAMAGES, OR LOST PROFITS OR THE COST OF
PROCUREMENT OF SUBSTITUTE GOODS, TECHNOLOGY OR SERVICES REGARDLESS OF WHETHER
ANY SUCH CLAIM FOR DAMAGES, LOST PROFITS OR OTHER COSTS IS BASED ON TORT,
WARRANTY, CONTRACT OR ANY OTHER LEGAL THEORY, EVEN IF ADVISED OF THE POSSIBILITY
OF SUCH DAMAGES.
9.7 Risk of Failure; No Representations. Each of Senesco and Tilligen
-------------------------------------
recognize that risk is inherent in the collaborative efforts such as those being
undertaken in this Agreement and each thereof voluntarily assume this risk.
Accordingly, subject to the rights to terminate provided in Section 4, any other
failure of any Intellectual Property provided for use in connection with or
developed under this Agreement to perform as desired despite the reasonable
efforts of the responsible party or parties will not be deemed to be a breach of
this Agreement. Other than as set forth in this Agreement, NO PARTY MAKES ANY
REPRESENTATION OR WARRANTY, EXPRESS OR IMPLIED, WITH RESPECT TO PATENTS OWNED OR
LICENSED BY THEM OR ANY KNOW-HOW INCLUDING, WITHOUT LIMITATION, ANY WARRANTY OF
NONINFRINGEMENT, PATENTABILITY, MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE.
10. APPLICABLE LAW.
--------------
10.1 Governing Law; Jurisdiction. The validity, interpretation and
------------------------------
performance of this agreement and any dispute connected with this agreement
shall be governed by and determined in accordance with the statutory,
regulatory, and decisional law of the State of Washington (exclusive of such
state's choice or conflicts of laws rules and except for the U.N. convention on
contracts for the international sale of goods). Subject to having first complied
with the requirements of Section 11.3, any legal actions or proceedings brought
under this Agreement brought by Senesco shall be subject to the exclusion
jurisdiction of the state and federal courts in, and any mediation or
arbitration proceeding initiated by Senesco pursuant to Section 11.3 shall occur
in, King County, Washington; and any legal actions or proceedings brought by
Tilligen shall be subject to the exclusive jurisdiction of the state and federal
courts in, and any mediation or arbitration proceeding initiated by Tilligen
pursuant to Section 11.3 shall occur in, Middlesex County, New Jersey, and each
party hereby consents to the jurisdiction of the court as provided above.
11. MISCELLANEOUS PROVISIONS.
------------------------
14
11.1 Notices. All notices and other communications required or permitted
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under this Agreement shall be deemed to be properly given when in writing and
sent by registered or certified mail, postage prepaid or by reputable courier
service providing evidence of delivery or by facsimile with receipt
confirmation, to the other party at the address set forth below, or at such
other address as either party may be in writing designate from time to time for
these purposes.
If to Tilligen: Tilligen, Inc.
▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: Chief Technical Officer
Fax No.: ▇▇▇-▇▇▇-▇▇▇▇
If to Senesco: Senesco Technologies , Inc.
▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, VP, Corp. Dev.
Fax No.: ▇▇▇.▇▇▇.▇▇▇▇
11.2 Assignability. The rights and obligations acquired herein by the
-------------
parties are not assignable, transferable or otherwise conveyable, in whole or
part (by operation of law or otherwise) to any third party without the consent
of other party, which shall not be unreasonably withheld, except that either
party may, without such consent, assign its rights and obligations to any
purchaser of all or substantially all of the assets of the party related to this
Agreement or to any successor corporation resulting from any merger or
consolidation of a party. Any attempted assignment conflicting with this Section
shall be null and void and without effect.
11.3 Dispute Resolution.
------------------
11.3.1 All claims, disputes, and other matters in controversy
("Dispute") arising directly or indirectly out of or related to this Agreement,
or the breach thereof, whether contractual or noncontractual, and whether during
the term or after the termination of this Agreement, shall be resolved
exclusively according to the procedures set forth in this Section 11.3.
11.3.2 Mediation. No Party shall commence an arbitration proceeding
pursuant to the provisions of Paragraph 11.3.3 below unless such Party shall
first give written notice (a "Dispute Notice") to the other Party in the same
manner otherwise provided for notice in this Agreement, setting forth with
reasonable specificity the nature of the Dispute. The Dispute Notice shall
constitute a notice and demand for mediation. The Parties shall attempt in good
faith to resolve the Dispute by mediation under the CPR Mediation Procedure for
Business Disputes in effect on the date of the Dispute Notice. CPR is the Center
for Public Resources Institute for Dispute Resolution, ▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇
▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇. If the Parties cannot agree on the selection of a
15
mediator within twenty (20) days after delivery of the Dispute Notice, the
mediator shall be selected by CPR. If the Dispute has not been resolved by
mediation within sixty (60) days after delivery of the Dispute Notice, then the
Dispute shall be determined by arbitration in accordance with the provisions of
Paragraph 11.3.3 below.
11.3.3 Arbitration. Any Dispute that is not settled by mediation as
provided in Paragraph 11.3.2 above shall be resolved by arbitration in
accordance with the CPR Non-Administered Arbitration Rules in effect on the date
of the Dispute Notice, as modified by the terms set forth in this Paragraph
11.3.3, by three independent and impartial arbitrators, of whom each party shall
appoint one and the third, who shall serve as chairman, shall be appointed by
CPR. The arbitration shall be governed by the Federal Arbitration Act, 9 U.S.C.
ss. 1-16, and judgment upon the award rendered by the arbitrators may be entered
by any court having jurisdiction thereof.
11.3.3.1 The arbitrators shall issue an award in writing
specifying their findings of fact and conclusions of law. The arbitrators are
not empowered to award damages in excess of compensatory damages and each Party
hereby irrevocably waives any right to recover such damages with respect to the
Dispute.
11.3.3.2 Upon the application by any Party to a court for an
order confirming, modifying, or vacating the award, the court shall have the
power to review whether, as a matter of law based on the findings of fact
determined by the arbitrators, the award should be confirmed, or should be
modified or vacated in order to correct any errors of the law governing the
substance of this Agreement that may have been made by the arbitrators. In order
to effectuate such judicial review limited to issues of law, the Parties agree
(and shall stipulate to the court) that the findings of fact made by the
arbitrators shall be final and binding on the parties and shall serve as the
facts to be submitted to and relied on by the court in determining the extent to
which the award should be confirmed, modified, or vacated.
11.3.4 If any Party fails to proceed with mediation or arbitration as
provided herein or unsuccessfully seeks to stay such mediation or arbitration,
or fails to comply with any arbitration award, or is unsuccessful in vacating or
modifying the award pursuant to a petition or application for judicial review,
the other Party(ies) shall be entitled to be awarded costs, including reasonable
attorneys' fees, paid or incurred by such other party in successfully compelling
such arbitration or defending against the attempt to stay, modify, or vacate
such arbitration award and/or successfully defending or enforcing the award.
11.3.5 All applicable statutes of limitations and defenses based upon
the passage of time shall be tolled while the procedures specified in this
Section 11 are pending. The Parties will take such action, if any, required to
effectuate such tolling.
11.3.6 The provisions of this Section 11.3 shall survive termination
or expiration of this Agreement..
16
11.4 Severability. In case any one or more of the provisions contained in
------------
this Agreement shall for any reason be held invalid, illegal or unenforceable in
any respect, such invalidity, illegality or unenforceability shall not affect
any other provisions hereof, but this Agreement shall be construed as if such
invalid or illegal or unenforceable provisions had never been contained herein.
11.5 Counterparts. This Agreement may be executed in two (2) counterparts,
------------
each of which shall be an original with the same effect as if the signatures
thereto and hereto were upon the same instrument.
11.6 Headings. Headings as to the contents of particular Sections are for
--------
convenience only and are in no way to be construed as part of this Agreement or
as a limitation of the scope of the particular Sections to which they refer.
11.7 Export Control. Notwithstanding any other provisions of this
---------------
Agreement, Tilligen agrees to make no disclosure or use of any Senesco
information or Senesco technology furnished or made known to Tilligen pursuant
to this Agreement, and Senesco agrees to make no disclosure or use of any
Tilligen information or Tilligen technology disclosed to Senesco pursuant to
this Agreement except in compliance with the laws and regulations of the United
States of America, including the Export Administration Regulations promulgated
by the Office of Export Administration International Trade Administration,
United States Department of Commerce; and in particular, each party agrees not
to export, directly or indirectly, either
o the technical data furnished or made known to it by the other party
pursuant to this Agreement; or
o the "direct product" thereof; or
o any commodity produced using such technical data
to any country or countries for which a validated license is required unless a
validated license is first obtained pursuant to the Export Administration
Regulations. The term "direct product" as used above, is defined to mean the
immediate product (including process and services) produced directly by the use
of the technical data.
11.8 Force Majeure. Except for payments of money, neither of the parties
--------------
shall be liable for any default or delay in performance of any obligation under
this Agreement or the Research Plan caused by any of the following: Act of God,
war, riot, fire, explosion, accident, flood, sabotage, compliance with
governmental requests, laws, regulations, orders or actions, national defense
requirements or any other event beyond the reasonable control of such party; or
labor trouble, strike, lockout or injunction (provided that neither of the
parties shall be required to settle a labor dispute against its own best
judgment).
The party invoking this subparagraph shall give the other party written notice
pursuant to Section 11.1 and full particulars of such force majeure event as
soon as possible after the occurrence of the cause upon which said party is
relying.
17
Both Senesco and Tilligen shall use reasonable efforts to mitigate the effects
of any force majeure on their respective part.
11.10 Negation of Agency. It is agreed and understood by the parties hereto
------------------
that each of Tilligen and Senesco, in its performance of its obligations and
responsibilities under this Agreement, is an independent contractor and that
nothing herein contained shall be deemed to create an agency, partnership, joint
venture or like relationship between the parties. The manner in which each of
Tilligen and Senesco carries out its performance under this Agreement is within
each of Tilligen's and Senesco's sole discretion and control.
11.11 Other Requests. The parties hereto agree that upon reasonable request
--------------
of the other party, each such party shall execute and deliver such additional
documents and Agreements, and take such further actions, as may be necessary in
order to fulfill and give effect to the terms of this Agreement.
11.12 Integration; Amendment and Waiver; Conflict. This Agreement,
------------------------------------------------
including any exhibits or other attachments hereto, constitutes the entire
agreement of the parties with respect to the subject matter hereof, and
supersedes all prior or contemporaneous understandings or agreements, whether
written or oral, between the parties with respect to the subject matters. This
Agreement may be amended, modified, superseded or canceled, and any of the terms
may be waived, only by a written instrument executed by each party or, in the
case of waiver, by the party or parties waiving compliance. The delay or failure
of any party at any time or times to require performance of any provisions shall
in no manner affect the rights at a later time to enforce the same. No waiver by
any party of any condition or of the breach of any term contained in this
Agreement, whether by conduct, or otherwise, in any one or more instances, shall
be deemed to be, or considered as, a further or continuing waiver of any such
condition or of the breach of such term or any other term of this Agreement. In
the event of any conflict or inconsistency between the terms and conditions of
this Agreement and the terms and conditions of the Research Plan, the terms and
conditions of the Agreement shall control.
[SIGNATURE PAGE FOLLOWS]
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed and delivered as of the Effective Date.
TILLIGEN, INC. SENESCO TECHNOLOGIES, INC.
By /s/ ▇▇▇ ▇▇▇▇ By /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
-------------------- -----------------------
Date 9/20/02 Date 9/27/02
-------------------- -----------------------
19
APPENDIX A
Senesco [**] supplies sufficient seed of [**] varieties of [**].
Tilligen determines mutagenesis protocol; and mutagenizes seed.
Tilligen, with [**], plants seed in [**] farm in summer of 2002.
Senesco provides DNA sequence of one to four Gene Targets to Tilligen.
Tilligen, [**] , and Senesco representatives to observe M1 plantings in fall of
2002.
Tilligen to design and test primers within 45 days of receipt of DNA sequence
information from Senesco to be used for tilling.
Tilligen to harvest [**] seed (September to October 2002).
Tilligen to replant [**] M2 seedlings in greenhouse ( planting November 2002
through February 2003; harvesting M3 seed June - August 2003).
Tilligen to prepare DNA samples from individual M2 [**] plants from late
November 2002 into March 2003, and till for mutations in approved targets from
December 2002 into June 2003. Results will be communicated to Senesco team on a
biweekly basis.
For mutations of interest, Tilligen will propagate through self and backcross
generations to homozygosity. At same time, seed containing the mutations
(possibly heterozygous) will be provided to Senesco, along with sequence
information of the mutation.
For mutations of interest, Tilligen will proceed to file provisionally with the
US patent office. Subsequent actions on all patent filings will be jointly
discussed by Tilligen and Senesco.