EXHIBIT 10.5
(REDACTED)
[ * ] = Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
13 July 99 Page 1
RESEARCH, LICENSE AND OPTION AGREEMENT
THIS AGREEMENT is entered into as of the 23rd day of October, 1998 (the
"Effective Date"), and has been amended and restated as of the 14th day of July,
1999 (the "Amendment Date"), by and between The Salk Institute for Biological
Studies, a nonprofit public benefit corporation organized under the laws of the
State of California ("Salk"), and Agritope, Inc., a Delaware corporation
("Agritope").
▇. ▇▇▇▇ has developed, and intends further to develop, and owns
all right, title and interest in and to a Collection defined herein.
B. Agritope is experienced in the management of large scale
research programs and in genetic studies and techniques likely to be useful in
the screening and analysis of the Collection. Agritope believes that useful
information may be derived from the Collection, which may aid in the discovery
or development of commercializable products, and desires to help support and to
participate with Salk in a research program for that purpose.
▇. ▇▇▇▇ desires Agritope's support and participation in such a
research program, and is willing to grant Agritope certain licenses and options
to obtain licenses to Salk rights in connection therewith and with the potential
commercialization of such products.
▇. ▇▇▇▇ and Agritope desire to clarify their relationship and to
update this Agreement as of the Amendment Date, in consideration of their mutual
agreements reflected herein.
NOW, THEREFORE, the parties hereby agree as follows:
1. DEFINITIONS.
1.1 "ACTIVATION TAGGING" shall mean a gene identification strategy
[ * ] and subsequently applied to whole plants in the Salk
Institute Plant Biology Laboratory, and as more fully
described in the additional references in Schedule 1.1 to this
Agreement, in which ubiquitously and highly active
transcriptional enhancers or other activators are inserted at
random sites of the genome using transferred DNA (T-DNA) of
AGROBACTERIUM TUMEFACIENS, and similar strategies and
techniques in ARABIDOPSIS plants, irrespective of the
particular vectors, markers, enhancers or activators used.
1.2 "AFFILIATE" of Agritope shall mean any entity that, directly
or indirectly, owns and controls the voting of at least 50% of
the voting capital shares of Agritope (a "Parent" entity) or
of any Parent entity in any tier (which are thereby also
"Parent" entities and therefore Affiliates hereunder), or at
least 50% of the voting capital shares (or equivalent control)
of which is, directly or indirectly, owned, and the voting of
[ * ] = Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
13 July 99 Page 2
which is controlled, by Agritope, its Parent, any other Parent
entity, or any other Affiliate of Agritope.
1.3 "AGRITOPE'S SHARE" shall mean that percentage of the
out-of-pocket expenses of Salk incurred in connection with the
preparation, filing, prosecution up to and through appeal from
a final rejection by a patent examiner, and maintenance of the
applicable patent applications and patents, including the
reasonable fees and expenses of attorneys and patent agents,
filing fees and maintenance fees, and the filing of
applications under the Patent Cooperation Treaty, but
excluding costs associated with any patent infringement
actions; provided, however that such out-of-pocket expenses
shall not include:
(a) any extension fees paid or payable following the
fifth anniversary of the Effective Date;
(b) more than $15,000 total in post-filing prosecution
costs associated with an application, including
continuations from an initial parent application
without Agritope's agreement in advance that such
expenses are desirable and necessary business
expenses; or
(c) fees in connection with any interference proceedings
in any patent office or in a court of law, without
Agritope's agreement in advance that such expenses
are desirable and necessary business expenses.
Agritope's Share shall be 100% as to patent applications and
patents that are Salk Program Patents. Agritope's Share shall
be 100% as to patent applications and patents that are Listed
Salk Background Patents that are not licensed by Salk to any
third party. Agritope's Share shall be a prorata percentage,
shared fairly with the other Salk licensees, as to patent
applications and patents that are Listed Salk Background
Patents that are licensed by Salk to any third party. Where
Salk is required to file continuations-in-part or divisional
patent applications: (i) each such continuation-in-part and
divisional application shall be treated as a separate
application for purposes of this definition of Agritope's
Share, and for purposes of clause (b) above, the total
post-filing prosecution costs associated with the parent
application will be added to such costs for the
continuation-in-part or divisional application based thereon
which has the highest post-filing prosecution costs of all
continuations-in-part and divisional applications associated
with that parent application; and (ii) each such
continuation-in-part and divisional application shall be
treated as a separate application for purposes of determining
which applications will remain among the Listed Salk
Background Patents under Section 1.20 or among the Salk
Program Patents under Section 1.21, pursuant to Agritope's
rights described in those sections.
13 July 99 Page 3
1.4 "COLLECTION" shall mean: (i) the collection of ARABIDOPSIS
plants, and associated germplasm, seeds, and/or gene
constructs that are direct derivatives from the original
Collection, and (ii) any other collection of plants, and
associated germplasm, seeds, and/or gene constructs developed
or to be developed in the laboratory of Salk's Program
Coordinator through the generation of a large number of T1
lines (where [ * ] such lines is understood to be a large
number for this purpose) are generated using Activation
Tagging or any other transgenic insertional technique(s), [ *
].
1.5 "CONFIDENTIAL TECHNOLOGY" shall mean all technology and
related information that is, at the relevant time hereunder,
required to be protected as confidential pursuant to Section 8
hereof.
1.6 "DEVELOPMENT COSTS" shall mean the sum of all direct and
indirect costs incurred by Agritope (whether or not separately
funded in whole or part by third parties) from the beginning
of the Research Program and any preparatory stages in
establishing, funding, planning, and managing the Research
Program, in creating and obtaining rights in and to any
Licensed Product or the use or marketing thereof, and in
seeking certification (regulatory and otherwise) for Licensed
Products. Without limiting the generality of the foregoing,
the Development Costs will include: (i) all sums paid or
payable by Agritope to Salk in connection with or in support
of the Research Program (other than Royalties hereunder)
including the option and license fees hereunder; (ii) all
patent filing, prosecution and maintenance costs associated
with Salk Program Patents, Salk Background Patents, and/or any
Agritope or other patents directed to or covering any Licensed
Products; (iii) Agritope's fully-burdened costs of internal or
other third-party research and development and field trials,
market analyses, test marketing, and other tests or trials of
Licensed Products; and (iv) any and all milestones and
licensee fees payable to any third party to the extent
required to obtain rights to make, use, sell, offer for sale,
or import/export any Licensed Product. Development Costs shall
be derived from Agritope's financial statements which shall be
prepared in accordance with generally accepted accounting
principles in the U.S. ("US GAAP") and with Agritope's
customary accounting policies and practices for its programs
and products.
1.7 "EXCLUSIVITY PERIOD" shall mean that period during the License
Period that is determined on a country by country basis for
each Licensed Product and that extends from the Effective Date
until there are no longer any Salk Program Patents in that
country applicable to the making, using, selling, offering for
sale developing or importing/exporting of the relevant
Licensed Product, or, if later, until all of Salk's
Confidential Technology relevant to the applicable Licensed
Product or its development has been disclosed without
restriction to the public (but in the case of countries in the
European Union where there are no longer any Salk Program
Patents based at least in part on technology existing as of
the Effective Date, the Exclusivity Period applicable to the
relevant Licensed Product will not extend longer in such
country than ten years from the first commercial sale thereof
in any country in the European Union). Restrictions on passive
[ * ] = Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
13 July 99 Page 4
marketing (i.e., merely accepting unsolicited orders) of a
Licensed Product by Salk in the European Union will not
(unless otherwise permitted under applicable law) last more
than five years from the first commercial sale thereof in any
country in the European Union.
1.8 "FIELDS OF USE" shall mean any and all plants and processes
involving plants, including without limitation whole plants,
propagation and production, cultivation, breeding, genetic or
other modification, all plant tissues, seeds, and all related
articles, activities and processes.
1.9 "JOINT INVENTIONS" shall mean any inventions or technology
that is, under the then prevailing U.S. rules and
interpretations, jointly conceived or reduced to practice by
or for Salk and Agritope.
1.10 "LICENSED PATENTS" shall mean the Salk Program Patents and the
Salk Background Patents.
1.11 "LICENSE PERIOD" shall mean, as to each Licensed Product in
each county in the world, the period from the Option Exercise
through the last to occur of the following (but not after the
expiration or termination of this Agreement as provided
herein):
(a) the [ * ] of the commercial launch of such Licensed
Product;
(b) the expiration of the Exclusivity Period applicable
to such Licensed Product in such county.
1.12 "LICENSED PRODUCTS" shall mean:
(a) products, processes and technologies the relevant
manufacture, use, sale, offer for sale, or import of
which would in the applicable jurisdiction, in the
absence of the licenses granted under this Agreement,
infringe upon a claim of an issued and unexpired Salk
Program Patent that (i) as not been held
unenforceable, unpatentable or invalid by a decision
of a court or governmental body of competent
jurisdiction, where such decision is unappealable or
unappealed within the time allowed for appeal; (ii)
has not been rendered unenforceable through
disclaimer or otherwise; and (iii) has not been lost
through an interference, reexamination or reissue
("Program Patent Licensed Products"); and
[ * ] = Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
13 July 99 Page 5
(b) products, processes and technologies not described in
clause (a) in this section:
(i) that incorporate or use any gene or sequence
the function, activity or use of which is
first discovered as a direct result of work
performed in the Research Program and the
relevant manufacture, use, sale, offer for
sale, or import of which would in the
applicable jurisdiction, in the absence of
the licenses granted under this Agreement,
infringe upon a claim of an issued and
unexpired Salk Background Patent that (A) as
not been held unenforceable, unpatentable or
invalid by a decision of a court or
governmental body of competent jurisdiction,
where such decision is unappealable or
unappealed within the time allowed for
appeal; (B) has not been rendered
unenforceable through disclaimer or
otherwise; and (C) has not been lost through
an interference, reexamination or reissue
(referred to herein as the "Background
Licensed Products"); or
(ii) whether not separately covered by Salk
Background Patents or by patents of Agritope
or others, the discovery or isolation of
which was made from or using physical
materials provided to Agritope by Salk as
part of the Collection (referred to herein
as the "Collection Licensed Products"); or
(iii) the conception, discovery, isolation, or
development of which by Agritope or its
Affiliates or sublicensees was enabled in a
material way by the use of any Salk Program
Technology or Salk Background Technology,
other than Background Licensed Products or
Collection Licensed Products (referred to
herein as "Derivative Licensed Products").
o It is understood that the rights of the
parties in and to the use of the previously discovered genes
and sequences specifically covered by that certain Option to
License and Research Support Agreement dated February 25,
1997, as amended, between Salk and Agritope's predecessor
(Epitope, Inc.) and as assigned to Agritope (the "1997 Option
and Research Agreement [ * ] Further, it is understood that
[ * ].
1.13 "NET INCOME" shall mean that portion of Agritope's earnings
before interest and income tax ("EBIT") derived in the
applicable period from engaging in the development,
certification (regulatory and otherwise), patenting,
manufacture, promotion, marketing and sale of Licensed
Product(s). Net Income shall be derived from financial
statements prepared in accordance with US GAAP and with
Agritope's customary accounting policies and practices for its
products.
[ * ] = Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
13 July 99 Page 6
1.14 "NET SALES" shall mean payments received by Agritope to the
extent pertaining to net sales of a Program Patent Licensed
Product or a Background Licensed Product or a Collection
Licensed Product by Agritope. The calculation of Net Sales
shall include amounts specifically identifiable to such
Licensed Product and amounts allocated to the Licensed
Product, it being understood that amounts which are not
specifically identifiable to the Licensed Product by virtue of
their being identifiable to a group of products that includes
the Licensed Product shall be allocated thereto in a
consistent and equitable manner which will equitably reflect
the contribution of the Licensed Product to such Net Sales.
Amounts to be included in the calculation of Net Sales shall
be those representing the gross amount received, less:
(a) quantity and/or normal and customary cash discounts
allowed or taken;
(b) credits, free goods, rebates and/or adjustments
allowed to or taken by bona fide arms' length
purchasers by reason of rejections, returns,
retroactive price reductions, or volume purchasing
discounts; and
(c) allowances for freight, taxes and insurance.
1.15 "PROGRAM COORDINATOR(S)" shall mean the individual at Agritope
and the individual at Salk that are given the primary
responsibility to coordinate and to facilitate the respective
parties' activities under the Research Program. Salk's initial
Program Coordinator is ▇▇▇▇▇▇ ▇▇▇▇▇▇, Ph.D., and Agritope's
initial Program Coordinator is D. ▇▇ ▇▇▇▇▇-▇▇▇▇▇▇, Ph.D. The
parties may replace their respective Program Coordinators from
time to time as the need arises due to departures of personnel
or the like, provided that the replacement is reasonably
acceptable to the other party. ▇▇. ▇▇▇▇▇▇ and other
researchers funded by this program at the Salk are sometimes
collectively referred to herein as the "Salk Researchers."
1.16 "RECOVERY POINT" shall mean a point in time when Agritope has
recognized aggregate Net Income equal to the total Development
Costs at that time. Where a Recovery Point is reached prior to
the end of the Research Program, but subsequent additional
Development Costs are incurred during the Research Program in
excess of the aggregate Net Income (if any) recognized by
Agritope since that Recovery Point, the "Recovery Point" will
thenceforward not be considered reached for purposes of
Section 5.2, unless and until such aggregate Net Income since
the prior Recovery Point exceeds the total additional
Development Costs incurred since such prior Recovery Point.
1.17 "RESEARCH PROGRAM" shall mean the program of work, testing,
and other research and development to be conducted by the Salk
Researchers in the laboratory of Salk's Program Coordinator
and by Agritope or its Affiliates, from and based on the
13 July 99 Page 7
Collection. The Research Program is defined and delineated in
the Research Plan attached to this Agreement as Exhibit C (the
"Research Plan").
1.18 "ROYALTIES" shall mean the royalties (including Sublicensing
Fees and sales-based royalties) payable to Salk pursuant to
Section 5 hereof.
1.19 "SALK BACKGROUND TECHNOLOGY" shall mean, other than the Salk
Program Technology, all information, technical or otherwise,
including, but not limited to, that comprised in formulae,
protein sequences, gene constructs, data, techniques, manuals,
instructions, samples, or inventions, development processes,
assays, improvements, and specifications, delivered or
disclosed by Salk to Agritope prior to the date of this
Agreement or hereafter during or with respect to the Research
Program that is or may be related to or useful in the Research
Program or otherwise for the development or exploitation of
any of the Salk Program Technology or any Licensed Product,
and all intellectual property rights therein and thereto.
1.20 "SALK BACKGROUND PATENTS" shall mean, other than the Salk
Program Patents, Salk's rights under United States and foreign
patents, if any, obtained and in force during the term of this
Agreement, and United States and foreign patent applications,
in each case covering or disclosing any of the Salk Background
Technology supplied to Agritope before, on or after the
Effective Date or any inventions that are otherwise related to
or useful for the development or exploitation of any of the
Salk Background Technology, the Collection, the Salk Program
Technology, or any Licensed Product. Salk has identified to
Agritope, and Agritope has accepted as such, certain Salk
Background Patents, as listed in Exhibit A hereto on a
country-by-country basis (the "Listed Salk Background
Patents"). Salk may from time to time during the License
Period by notice to Agritope propose to add other Salk
Background Patents (whether covering additional inventions or
as to filings in different countries) to the Listed Salk
Background Patents. If Agritope declines to accept any such
proposed additional Listed Salk Background Patents within
ninety days from such notice by Salk, such proposed Listed
Salk Background Patent (on a country-by-country basis), from
that time forward, will no longer be a Salk Background Patent
hereunder, provided, however, that if Agritope declines to
accept such a proposed Listed Salk Background Patent in any
country or countries and subsequently Salk on its own account
elects to support the patent costs described in Section 1.3
with respect thereto, then Salk shall so inform Agritope and
Agritope shall be entitled to another opportunity to accept
such proposal to add the same to the Listed Salk Background
Patents, which acceptance by Agritope will require that
Agritope bear Agritope's Share with respect thereto, effective
from the date Agritope first declined such proposal to add the
same to the Listed Salk Background Patents. This second
opportunity for Agritope to accept a proposal to add a Salk
Background Patent shall not apply in cases where another
licensee of Salk elects to support fully said patent costs. If
Agritope is afforded such a second opportunity to accept a
proposal to add a particular Salk Background Patent, and
13 July 99 Page 8
Agritope declines to do so as stated above within ninety days
after being so afforded such opportunity, then Salk may at its
discretion and at its expense continue to prosecute such Salk
Background Patent to issuance, it being agreed that if any
such patent is issued thereon, such patent shall not be
included in the Salk Background Patents under this Agreement,
and Salk may use, license or exploit the same free of any
obligation to Agritope under this Agreement with respect
thereto.
1.21 "SALK PROGRAM PATENTS" shall mean Salk's rights under United
States and foreign patents, if any, obtained and in force
during the term of this Agreement, and United States and
foreign patent applications, in each case covering or
disclosing any aspect or part of the Collection or the
development or use thereof or any of Salk's improvements,
modifications, alterations, or enhancements to the Collection
or with respect to the development or use thereof or to
Activation Tagging arising from and as a direct result of work
conducted as part of the Research Program, and any inventions
that are made or acquired in whole or in part by Salk during
and in the course of and as a direct result of the Research
Program, including any gene or sequence the function, activity
or use of which is first discovered as a direct result of work
performed in the Research Program. Agritope may by notice to
Salk from time to time decline to accept any Salk Program
Patents as such hereunder, either entirely or on a
country-by-country basis, from that time forward; provided,
however, that if Agritope declines to accept a Salk Program
Patent in any country or countries and subsequently Salk on
its own account elects to support the patent costs described
in Section 1.3 with respect thereto, then Salk shall so inform
Agritope and Agritope shall be entitled to another opportunity
to accept the same as part of the Salk Program Patents, which
acceptance by Agritope will require that Agritope: (i) bear
Agritope's Share with respect thereto, effective from the date
Agritope first declined to accept the same as part of the Salk
Program Patents; and (ii) agree that Agritope's license
thereto hereunder in such country or countries shall be
nonexclusive, notwithstanding any exclusive grants under
Sections 3.3 and 3.4. This second opportunity for Agritope to
accept a proposal to add a Salk Program Patent shall not apply
in cases where another licensee of Salk elects to support
fully said patent costs. If Agritope is afforded such a second
opportunity to accept a proposal to add a particular Salk
Program Patent, and Agritope declines to do so as stated above
within ninety days after being so afforded such opportunity,
then Salk may at its discretion and at its expense continue to
prosecute such Salk Program Patent to issuance, it being
agreed that if any such patent is issued thereon, such patent
13 July 99 Page 9
shall not be included in the Salk Program Patents or the Salk
Background Patents under this Agreement, and Salk may use,
license or exploit the same free of any obligation to Agritope
under this Agreement with respect thereto.
1.22 "SALK PROGRAM TECHNOLOGY" shall mean, as applicable from the
context, any and all deliverables, services and contributions
from Salk under or arising from and as a direct result of the
Research Program, other than the physical materials of the
Collection itself, and all related information, technical or
otherwise, including, but not limited to, that comprised in
formulae, protein sequences, gene constructs, data,
techniques, manuals, instructions, samples, or inventions,
development processes, assays, improvements, and
specifications developed by Salk in the laboratory of Salk's
Program Coordinator as a direct result of the Research Program
or as a direct result of Salk's other use of the Collection or
Salk's exercise for research purposes of any rights under Salk
Program Patents or Salk Program Technology (except as to Salk
Program Technology that is then licensed nonexclusively as
provided in Section 6.3), as described in Sections 3.2, 3.3,
or 3.4, and all intellectual property rights therein and
thereto.
1.23 "SUBLICENSING FEES" shall mean the consideration received by
Agritope in return for the grant of any sublicense by it of
any rights under any of the Licensed Patents or Salk Program
Technology, but excluding: [ * ] The calculation of
Sublicensing Fees shall include amounts specifically
identifiable to the rights sublicensed and amounts allocated
to such rights, it being understood that amounts which are not
specifically identifiable to the sublicensed rights by virtue
of their being identifiable to a group of products or services
that includes the sublicensed rights shall be allocated
thereto in a consistent and equitable manner which will
equitably reflect the contribution of the sublicensed rights
to such Sublicensing Fees.
2. RESEARCH PROGRAM.
2.1 Salk and Agritope shall cooperatively and in good faith engage
in and conduct the Research Program. The conduct of the
Research Program shall be coordinated on a regular basis by
the parties' Program Coordinators, in consultation with each
other. The Program Coordinators will be guided by the Research
Plan. Any material changes to the Research Plan will require
the written approval of both parties.
2.2 Following a planning phase (Phase I), the Research Program
will be conducted as described in the Research Plan. Phase I
will begin at the Effective Date and will extend until
Agritope notifies Salk that Agritope elects to proceed with
subsequent phases of the Research Program (the "Option
Exercise"), or Agritope notifies Salk that the Research
[ * ] = Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
13 July 99 Page 10
Program will be terminated, or the first anniversary of the
Effective Date, whichever occurs first. During Phase I:
(a) the parties will develop the Research Plan;
(b) Salk will maintain and preserve its existing
Collection and may expand it where it may do
so without substantial commitment of
resources; and
(c) Agritope and the laboratory of Salk's
Program Coordinator at Salk will consult and
cooperate with each other as requested in
the performance of the above tasks.
2.3 Agritope shall have right to terminate the Research Program at
its election at any time by giving Salk at least 180 days
prior written notice of such termination. Any payments coming
due to Salk pursuant to Section 4.2 or 4.3 prior to the
effective date of such termination shall be made when due,
notwithstanding that such notice of termination may have been
given. Except as provided in Section 7.3, Salk shall have the
right to terminate the Research Program if and only if Salk is
unable to continue to perform its tasks hereunder due to
causes beyond its reasonable control, such as serious damage
to or destruction of the laboratory of Salk's Program
Coordinator, or the death, disability or resignation of Salk's
Program Coordinator. No termination under this section will
terminate any licenses granted hereunder to Agritope. Salk's
obligations to submit final documentation and communication to
Agritope of the results of all Salk Research Program
activities through the effective date of the termination, and
Salk's obligations to deliver all seed of primary
transformants in existence as of such termination, shall
survive any such termination.
2.4 If Agritope fails to make the Option Exercise on or prior to
the first anniversary of the Effective Date, Agritope will be
deemed to have elected to terminate the Research Program, and
this will also effect a termination of this Agreement.
3. OPTION GRANT; OWNERSHIP AND LICENSES.
3.1 Except as otherwise explicitly licensed or transferred as
provided herein, each party will, as between it and the other
party hereto, retain ownership of any and all inventions,
copyrights, trade secrets, patent rights and other technology
and rights to the extent conceived or developed by its
personnel or contractors (other than the other party hereto),
and the parties shall co-own all Joint Inventions. Neither
party makes any grants by implication, estoppel, or otherwise,
except as provided herein.
13 July 99 Page 11
3.2 Subject to Section 10.2, Salk hereby agrees that with respect
to the subject matter of the Research Program, it will work
exclusively and solely with Agritope from the Effective Date
and throughout the Research Program, other than with respect
to Salk's own work with the Collection in the laboratory of
Salk's Program Coordinator as described herein in the course
of the Research Program, and it will not, without the prior
written consent of Agritope: (i) provide the original
Collection or the Collection developed or to be developed in
the Research Program or any portion thereof or any access
thereto to any third party; (ii) contract with any third party
to generate or to assist on a substantial and on-going basis
with the generation of other Collections; or (iii) make any
grants of rights in any Salk Program Patents, or (except as to
Salk Program Technology that is then licensed nonexclusively
as provided in Section 6.3) in any Salk Program Technology.
3.3 Subject to Section 10.2, Salk hereby grants to Agritope a
worldwide license, with right to sublicense, to use and to
exercise the Licensed Patents, the Salk Program Technology and
the Salk Background Technology for research purposes during
and in support of the Research Program. Such license is sole
and exclusive as to the Salk Program Patents and (except as to
Salk Program Technology that is then licensed nonexclusively
as provided in Section 6.3) the Salk Program Technology,
except for Salk's own exercise of such rights for research
purposes.
3.4 Subject to Section 10.2, Salk hereby grants to Agritope a
worldwide license, with right to sublicense, under the
Licensed Patents, the Salk Program Technology, and the Salk
Background Technology to make, have made, use, sell, offer for
sale, and import/export any and all Licensed Products during
the License Period in the Fields of Use. Except for Salk's own
exercise of such rights for research purposes, such license
shall be sole and exclusive as to the Salk Program Patents and
(except as to Salk Program Technology that is then licensed
nonexclusively as provided in Section 6.3) the Salk Program
Technology in the relevant nations during the Exclusivity
Periods applicable to the relevant Licensed Product, and
otherwise shall be nonexclusive.
3.5 Subject to Section 10.2, Salk hereby grants to Agritope the
right of first negotiation to obtain any rights sought to be
granted by Salk in or with respect to any research,
development, implementation or commercialization of or using
any Other Products and Technologies (as defined below). "Other
Products and Technologies" shall mean any products, processes
or technologies (including without limitation genes and/or
gene sequences and knowledge as to gene functions), other than
Salk Program Technology and Licensed Products, which are first
discovered in the laboratory of Salk's Program Coordinator
(whether or not by Salk Researchers) during the period from
the Amendment Date through the end of the Research Program in
13 July 99 Page 12
whole or in part through the use of any Activation Tagging
technology that exists and is available to the parties as of
the Amendment Date [ * ] or that is subsequently developed
during the Research Period jointly by any of the personnel in
the laboratory of Salk's Program Coordinator, on the one hand,
and by any of Agritope's or its Affiliates' personnel, on the
other. Pursuant to such right of first negotiation, Salk shall
notify Agritope in confidence, as provided in Section 8
hereof, of any desire or decision by Salk during the License
Term to grant any such rights in or to any Other Products and
Technologies, together with such detail about such rights and
the relevant Other Products and Technologies as appear to Salk
to be appropriate to enable Agritope to evaluate the same, and
as may be reasonably requested by Agritope for such purpose.
Salk shall negotiate in good faith with Agritope and only with
Agritope, for a period of up to [ * ] following such
notification in order to reach agreement on Agritope's
obtaining such rights. If and to the extent that any Other
Products and Technologies would be covered by any of
Agritope's rights or preferences under the 1997 Option and
Research Agreement, the provisions of this Section 3.5, shall
govern over those of the 1997 Option and Research Agreement,
to the extent of any inconsistency.
4. OPTION FEE; RESEARCH PROGRAM FUNDING.
4.1 Agritope shall pay Salk $10,000 within thirty days following
the Effective Date, as a nonrefundable fee for Salk's
agreements under Sections 3.2 and 3.3 and for Agritope's
option to elect to give the Option Exercise.
4.2 At such time, after the Option Exercise, as Salk has obtained
all the required governmental or other permits or
authorizations to begin construction of the greenhouse
facilities described in the Research Plan (the "Greenhouse"),
Salk shall so notify Agritope. Agritope will, within twenty
days thereafter, pay to Salk the sum of $200,000, to be used
by Salk toward the costs of the Greenhouse, it being
understood that such sum may not entirely cover all such
costs. Salk agrees to exert all reasonable efforts to obtain
such permits and authorizations within 60 days following the
Option Exercise.
4.3 At such time, after the Option Exercise, as Salk has
substantially completed construction of the Greenhouse, Salk
shall so notify Agritope. Salk agrees to exert all reasonable
efforts to substantially complete such construction within 140
days following the Option Exercise. Beginning on the first day
of the first calendar quarter following the substantial
completion of the construction of the Greenhouse, Agritope
shall pay Salk, on the first day of each calendar quarter
during the Research Program, one-fourth of the annual budget
for that year of the Research Program (which years will run
from the date of substantial completion of the construction of
the Greenhouse), as described in Exhibit B hereto, as amended
on the Amendment Date (the "Research Program Budget"), and
[ * ] = Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
13 July 99 Page 13
continuing until the twentieth such quarterly payment is made,
or until the entire budgeted amount set forth in the Research
Program Budget has been so paid, whichever first occurs;
provided, however, that Agritope may withhold any such
quarterly payment if Salk falls behind the schedule in the
Research Plan for the fulfillment of Salk's tasks (other than
for reasons beyond Salk's reasonable ability to control),
until Salk brings its performance back into compliance with
such schedule.
4.4 The parties may, by mutual written agreement from time to
time, alter the Research Program Budget to reflect and to
adjust for changes in the currently-contemplated level, type
or timing of Salk activities under the Research Program.
4.5 Except for the payments described above in this Section 4,
each of the parties shall bear all of its own costs and
expenses of the conduct of the Research Program and the
performance of its tasks thereunder.
5. COMMERCIALIZATION; ROYALTIES.
5.1 During the License Term following the successful development
and testing of a crop pursuant to the Research Program,
Agritope shall commercialize or authorize the
commercialization of such crop if and as it deems to be likely
to justify its efforts to do so. In recognition of Agritope's
support of and participation in the Research Program, Agritope
will not be required to achieve, and it makes no express or
implied representation or agreement that it will exert any
particular level of efforts to achieve, any Royalties or other
returns for Salk beyond the fees and payments described in
Section 4.
5.2 Agritope hereby agrees to pay to Salk the following Royalties
during the License Period:
5.2.1 [ * ] of:
(a) any and all [ * ]; and
(b) any other Sublicensing Fees, but only to the
extent that such fees are received after the
Recovery Point is reached; and
5.2.2 With respect to any and all Net Sales derived from
Licensed Products:
(a) [ * ] of such Net Sales derived from Program
Patent Licensed Products; or
(b) [ * ] of such Net Sales derived from Background
Licensed Products or Collection Licensed
Products; and
[ * ] = Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
13 July 99 Page 14
(c) [ * ] with respect any sales of Derivative
Licensed Products.
5.2.3 In the calculation of Royalties, only one application
of such percentage shall be made to the Net Sales of
that Licensed Product, regardless of how many
Licensed Patents may be applicable thereto. Where a
Licensed Product would meet the criteria described in
both of subsections [ * ] of Section 5.2.2, only one
such subsection will be applicable to the
determination of the Royalties payable hereunder, and
it shall be the subsection that would call for the
higher Royalty.
5.3 All Royalties shall be due quarterly within 60 days following
the end of each calendar quarter in respect of Sublicensing
Fees and Net Sales received in such calendar quarter. Each
such payment shall be accompanied by a statement of
Sublicensing Fees and Net Sales for the quarter and the
calculation of Royalties payable hereunder. All Royalties will
bear interest at the rate of 1% per month or the maximum legal
rate, whichever is less, from the date due through the date of
payment, but this provision shall not be used by Agritope as
an excuse for late payment. Agritope shall keep complete, true
and accurate records for the purpose of showing the derivation
of all Royalties payable to Salk under this Agreement. Salk or
its representatives shall have the right to inspect, copy, and
audit such records at any time during reasonable business
hours upon notice to Agritope. Information gathered during any
such inspection or audit shall be held in confidence by Salk,
except to the extent any of the exceptions stated in
paragraphs (a) - (f) of Section 8.4 apply thereto. Any such
audit shall be at the expense of Salk, unless the inspection
or audit reveals that, with respect to the period under audit,
less than 90% of the Royalties due to Salk hereunder have been
paid, in which event Agritope shall pay or reimburse Salk for
the reasonable expenses of such inspection or audit, in
addition to Salk's other remedies for such underpayment.
5.4 All monies due hereunder shall be paid in United States
Dollars to Salk in San Diego, California, USA. The rate of
exchange to be used shall be the average commercial rate of
exchange for the 30 days preceding the date of payment for the
conversion of local currency to United States Dollars as
published by The Wall Street Journal (or if it ceases to be
published, a comparable publication to be agreed upon by the
parties) or, for those countries for which such average
exchange rate is not published by The Wall Street Journal, the
exchange rate fixed on the fifth day prior to the date of
payment as promulgated by the appropriate United States
governmental agency as mutually agreed upon by the parties.
5.5 All monies payable to Salk as stated herein shall be grossed
up, such that Agritope will bear the effect of any required
taxes, exchange fees, or withholdings.
[ * ] = Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
13 July 99 Page 15
6. PATENT PROSECUTION AND MAINTENANCE.
6.1 Except as provided in Section 6.2 and 6.3, Salk shall at all
times control the preparation, filing, prosecution and
maintenance of any Salk Background Patents and Salk Program
Patents. Agritope will reimburse Salk for Agritope's Share of
Salk's reasonable expenses incurred after the Effective Date
directly in connection with such activities as to the Listed
Salk Background Patents and as to the Salk Program Patents;
provided, however, that if Salk licenses any Listed Salk
Background Patents to any third party subsequently to
Agritope's having paid any of Agritope's Share hereunder with
respect thereto, Salk shall credit, to any another payment
that may be, or that may thereafter become, owing by Agritope
to Salk under this or any other agreement, an amount equal to
such other licensee(s)' prorata share of the expenses
described in Section 1.3, as if Agritope and such other
licensee(s) had been licensees of such Listed Salk Background
Patent from the first date that such Agritope Share began to
accrue hereunder.
6.2 Throughout the Research Program and thereafter (with respect
to Salk Program Technology), the parties' Program Coordinators
will consult periodically and as requested with respect to
which aspects, if any, of the Salk Program Technology may
appropriately be the subject of one or more patent
applications. The parties will be guided by the principle,
except where either of them demonstrates that such a patent
application would be materially harmful to its legitimate
interests, that the maximum available patent protection will
be sought for the Salk Program Technology.
6.3 Subject to Section 10.2, if at any time Salk elects not to
file a patent application (whether as to all countries, or as
to any particular countries) claiming any Salk Program
Technology, or if Salk decides to abandon any pending
application or issued patent in any country which claims any
of Salk Program Patents, it shall provide adequate prior
notice to Agritope and give Agritope the opportunity to file,
prosecute or maintain such application or patent at Agritope's
expense; provided, however, that this section will not apply
to any inventions as to which Salk has then already given
Agritope at least one notice pursuant to Section 1.20 or 1.21,
along with the opportunity under those sections for Agritope
to support Salk's prosecution activities as stated in those
sections. If none of Salk, a federal agency (pursuant to
Section 10.2) or Agritope has applied for a patent in any
country or jurisdiction (including without limitation
provisional patent applications) with respect to an aspect of
the Salk Program Technology (despite having been given the
opportunity to do so under this section) prior to a mutual
determination by the Program Coordinators pursuant to Section
6.2 that no such application would be warranted as to such
aspect of the Salk Program Technology, or within nine months
after the first disclosure by Salk to Agritope of such aspect
13 July 99 Page 16
of the Salk Program Technology (whichever occurs first), then
the licenses to Agritope hereunder to that aspect of the Salk
Program Technology shall thereafter be nonexclusive,
notwithstanding anything herein to the contrary. If Agritope,
despite having been given opportunity to file, prosecute
and/or maintain (as applicable) any pending application or
issued patent in any country which claims any of Salk Program
Patents under this section, fails to do so, with the result
that such Salk Program Patent terminates or is rejected or
denied (in any case beyond any opportunity for further appeal
or reconsideration), then the subject matter of such former
Salk Program Patent shall thereafter, to that extent and in
that country, become part of the Salk Program Technology that
is not also a Salk Program Patent, and the licenses to
Agritope hereunder to that aspect of the Salk Program
Technology in such country shall thereafter be nonexclusive,
notwithstanding anything herein to the contrary.
6.4 Salk shall use its good faith efforts to provide Agritope with
an opportunity to review and comment on the text of each
patent application with respect to Salk Program Patents before
filing, and shall supply Agritope with a copy of such patent
application as filed, together with notice of its filing date
and serial number. Each party shall cooperate with the other
party, execute all lawful papers and instruments and make all
rightful oaths and declarations as may be necessary in the
preparation, prosecution and maintenance of all applications
and patents described in this Section.
7. TERM AND TERMINATION.
7.1 The term of this Agreement shall begin on the Effective Date
and shall, unless earlier terminated as provided herein,
continue until the end of the last remaining License Period.
If the term of this Agreement is not so terminated prior to
such expiration (whether or not the Research Program is
terminated prior to its conclusion pursuant to Section 2.3),
any and all then-remaining licenses to Agritope hereunder
shall, upon and after such expiration, become nonexclusive,
royalty-free, paid-up and irrevocable.
7.2 Agritope may at its option terminate this Agreement or the
License Period at its election upon at least 180 days' written
notice to Salk.
7.3 If either party materially breaches any of the terms,
conditions or agreements contained in this Agreement to be
kept, observed or performed by it, the other party may
terminate this Agreement, at its option and without prejudice
to any of its other legal or equitable rights or remedies, by
giving the party who committed the breach ninety days' notice
in writing, unless the notified party within such 90-day
period shall have cured the breach; provided, however, that
without prejudice to Salk's other rights or remedies hereunder
for a breach by Agritope, Salk's license under Section 3.4
13 July 99 Page 17
with respect to a particular crop shall not be terminable for
any reason following the satisfactory completion of the
development of such crop in the Research Program and the
earlier of the commencement of its commercialization, or
Agritope's authorization of such commercialization by any
third party. Neither party will be considered in breach of
this Agreement for purposes of the termination remedy stated
herein during any period in which there is a good faith
dispute between the parties as to the existence of such
breach. If the parties are, despite negotiations at
appropriate, high levels of their respective managements over
a period of at least ninety days, unable to resolve any good
faith dispute between them as to the existence of such breach,
such dispute may at the election of either party be resolved
in accordance with Section 11.8.
7.4 Agritope's obligations regarding payment of Royalties accrued
as of the date of termination, and the provisions of Sections
8, 10, and 11 hereof shall survive any expiration or
termination of this Agreement.
8. CONFIDENTIALITY.
8.1 In the course of the Research Program, whether before or after
the Effective Date, a party may disclose, or may have
disclosed, to the other confidential information belonging to
the disclosing party ("Discloser's Technology"), some of which
may be exclusively licensed to the receiving party as provided
hereunder (the "Exclusively Licensed Technology"). It is
understood, however, that the parties do not anticipate that
Salk will require, or that it will be provided with, any
confidential information of Agritope, and that should this
understanding change, the consent of Salk's Program
Coordinator will be obtained prior to the disclosure of such
Agritope confidential information to Salk.
8.2 The parties will cooperate reasonably with each other in
arranging for publication regarding the Research Program and
its results in appropriate scientific journals or monographs,
if such publication is desired by either party; provided,
however, that:
(a) either party may elect that no such publication will
be made as to results of the Research Program that
were obtained or discovered solely by it and not
jointly with the other party; and
(b) publication may be delayed if it would, or when it
would, lessen either party's ability to seek or
obtain patent protection for any invention or
improvement.
8.3 The reasonable cooperation referred to in Section 8.2 shall
include, without limitation:
13 July 99 Page 18
(a) responding within 30 days after any request by the
other party for consent to publication of any
manuscript (which request shall be accompanied by a
draft or detailed outline of such manuscript) as to
whether the same should not be published in whole or
in relevant part due to clause (a) above, or as to
whether such publication should be delayed for an
additional 60 days while patent applications are
being filed in situations covered by clause (b)
above; and
(b) consenting to and reasonably assisting with the
distribution of appropriate individual items and
specimen materials from the Collection following such
a publication, to the extent such items or materials
bear directly and specifically on the results that
are the principal subjects of such publication.
8.4 The receiving party will maintain in confidence the
Discloser's Technology and will not use it for any purpose
except as authorized hereunder. Both parties will maintain in
confidence the Exclusively Licensed Technology and will not
use it for any purpose except as authorized hereunder. Each
party shall safeguard such information against disclosure to
non-Affiliated third parties, including without limitation
employees and persons working or consulting for such party
that do not have an established, current need to know such
information for purposes authorized under this Agreement, and
each party shall require a similar agreement from its
Affiliates that are given any access to such information. This
obligation of confidentiality does not apply to restrict use
or disclosure by the receiving party of information and
material that meet one or more of the following criteria:
(a) they were properly in the possession of the receiving
party, without any restriction on use or disclosure,
prior to receipt from the other party;
(b) they are at the time of disclosure hereunder in the
public domain by public use, publication, or general
knowledge;
(c) they become general or public knowledge through no
fault of the receiving party following disclosure
hereunder;
(d) they are properly obtained by the receiving party on
a non-confidential basis from a third party not under
a confidentiality obligation to the disclosing party
hereto;
(e) they are independently developed by or on behalf of
the receiving party without the assistance of the
confidential information of the other party;
13 July 99 Page 19
(f) are required to be disclosed by order of any court or
governmental authority; provided, however, that the
receiving party shall use its best efforts to give
the disclosing party prior notice of any such
disclosure so as to afford the disclosing party a
reasonable opportunity to seek, at the expense of the
disclosing party, such protective orders or other
relief as may be available in the circumstances.
8.5 Notwithstanding the foregoing provisions Agritope shall be
permitted to disclose:
(a) any Salk Confidential Technology to regulatory
authorities and to potential licensees or
collaborators and other persons performing tests and
studies, and as needed or useful for regulatory
and/or marketing purposes, which disclosure shall be
made so far as reasonably practicable under
conditions of confidentiality and limited use; and
(b) any Salk Confidential Technology to its patent
attorney or agent or any patent authority in any
country as shall be reasonably required for filing or
prosecuting any patent application with respect to
any Licensed Product or any related process.
8.6 Neither party shall make any public announcement or other
publication regarding this Agreement (whether as to the
existence or terms hereof) or the Research Program or the
results thereof without the prior, written consent of the
other party, which consent shall not be unreasonably withheld;
provided that the foregoing shall not prohibit any disclosure
that is required by any applicable law, regulation, or by any
competent governmental authority.
9. INFRINGEMENT.
9.1 Each party shall promptly inform the other of any suspected
infringement of any of the Licensed Patents or the
infringement or misappropriation of Salk Confidential
Technology by a third party, to the extent such infringement
involves the manufacture, use, or sale of a Licensed Product
in any applicable Exclusivity Period ("Covered Infringement").
Each party will also exert reasonable efforts to notify the
other party of any suspected infringements of any of the
Licensed Patents by a third party that do not involve a
Covered Infringement.
9.2 If a suspected infringement or misappropriation does not
involve a Covered Infringement, Salk may take, or refrain from
taking, any action it chooses, with or without notice to
Agritope, and Agritope shall have no right to take any action
with respect to such suspected infringement or
misappropriation, nor to any recoveries with respect thereto.
Salk will exert reasonable efforts to keep Agritope informed
of actions Salk may take as described in the preceding
sentence. If the suspected infringement or misappropriation
13 July 99 Page 20
involves a Covered Infringement, Salk shall, within 30 days of
the first notice referred to in Section 9.1, inform Agritope
whether or not Salk intends to institute suit against such
third party with respect to a Covered Infringement. Agritope
will not take any steps toward instituting suit against any
third party involving a Covered Infringement until Salk has
informed Agritope of its intention pursuant to the previous
sentence.
9.3 If Salk notifies Agritope that it intends to institute suit
against a third party with respect to a Covered Infringement,
and Agritope does not agree to join in such suit as provided
in Section 9.4, Salk may bring such suit on its own and shall
in such event bear all costs of, and shall exercise all
control over, such suit. Salk may, at its expense, cause
Agritope to be joined in the suit as a plaintiff. Recoveries,
if any, whether by judgment, award, decree or settlement,
shall belong solely to Salk.
9.4 If Salk notifies Agritope that it desires to institute suit
against such third party with respect to a Covered
Infringement, and Agritope notifies Salk within 30 days after
receipt of such notice that Agritope desires to institute suit
jointly, the suit shall be brought jointly in the names of
both parties and all costs thereof shall be borne equally.
Recoveries, if any, whether by judgment, award, decree or
settlement, shall, after the reimbursement of each of Salk and
Agritope for its share of the joint costs in such action, be
shared between Salk and Agritope as the interests of the
parties were affected by the infringement.
9.5 If, as the parties expect, Salk notifies Agritope that it does
not intend to institute suit against such third party with
respect to a Covered Infringement (or fails to give any notice
in this respect or to actually bring a suit against the third
party), Agritope may institute suit on its own. Agritope shall
bear all costs of, and shall exercise all control over, such
suit. Recoveries, if any, whether by judgment, award, decree
or settlement, shall belong solely to Agritope; provided,
however, that any amounts recovered in excess of expenses
shall be subject to the payment of royalties under Section
5.2.2.
9.6 Should either Salk or Agritope commence a suit under the
provisions of this Section 9 and thereafter elect to abandon
the same, it shall give timely notice to the other party, who
may, if it so desires, be joined as a plaintiff in the suit
(or continue as such if it is already one) and continue
prosecution of such suit, provided, however, that the sharing
of expenses and any recovery of such suit shall be as
equitably agreed upon between Salk and Agritope.
10. REPRESENTATIONS, WARRANTIES AND INDEMNITIES.
10.1 Salk warrants that it has not received written notice of any
pending or threatened claim of infringement relating to the
13 July 99 Page 21
Collection, the Licensed Patents, the Salk Program Technology,
or the Salk Background Technology, and that it shall
immediately inform Agritope should any such notice be received
at any time by Salk. Nothing in this Agreement is or shall be
construed as a warranty or representation by Salk as to the
validity or scope of any Licensed Patent, or that anything
made, used, sold or otherwise disposed of under any license
granted in this Agreement is or will be free from infringement
of patents, copyrights and other rights of third parties, or
as an obligation to bring or prosecute actions or suits
against third parties for infringement, except to the extent
and in the circumstances described in Section 9.
10.2 Salk has informed Agritope, and Agritope acknowledges, that
the laboratories of Salk's Program Coordinator have received,
and expect to continue to receive, certain supports and grants
from one or more U.S. federal governmental agencies. To the
extent any of the Salk Background Technology, Salk Program
Technology, or Salk Program Patents has been, or later is,
conceived or first reduced to practice in the performance of
work under any such governmental funding, the U.S. Government
may have certain rights with respect thereto. This Agreement
and the grants hereunder are explicitly made subject to the
U.S. Government's rights under any agreement whereby such
governmental funding was provided to Salk, and any applicable
law or regulation, including P.L. 96-517, as amended by P.L.
98-620. To the extent permitted by such governmental funding
agreements, laws and regulations, Salk shall promptly elect to
retain title to any subject inventions that may be applicable
to this Agreement.
10.3 Each party represents and warrants to the other that it has
obtained, and will at all times during the term of this
Agreement hold and comply with, all licenses, permits and
authorizations necessary to perform this Agreement, as now or
hereafter required under any applicable statutes, laws,
ordinances, rules and regulations of the United States and any
applicable foreign, state, and local governments and
governmental entities.
10.4 Salk hereby waives all claims against, and shall defend and
indemnify Agritope and its Affiliates, personnel, and
sublicensees against any and all liability, loss, damage,
costs, legal costs (including without limitation reasonable
attorneys' fees) which may arise from the injury or death of
an employee or agent of Salk engaged in conducting the
research contemplated by or performed under this Agreement,
working in the facility in which such research is conducted,
or damage to or loss of the property of Salk, caused by the
negligence or willful misconduct of Salk in conducting such
research. With respect to any matter for which Salk has
indemnified Agritope hereunder, Salk shall be afforded the
right to control the defense of all actions, to enter into all
settlements, judgments or other arrangements in respect
13 July 99 Page 22
thereof. Agritope agrees to notify Salk promptly after it
becomes aware of any claim, action or proceeding by a third
party and to co-operate with Salk, at Salk's expense, in any
defense or prosecution thereof.
10.5 Except to the extent of the limited waiver and indemnity by
Salk set forth in Section 10.4: (i) Salk shall not be liable
for any direct, consequential, or other damages suffered by
Agritope, any licensee, or otherwise resulting from the use of
the research or any invention or product under this Agreement;
and (ii) Agritope shall be liable for and shall defend and
indemnify Salk against any and all liability, loss, claim,
damage, costs, legal costs (including without limitation
reasonable attorneys' fees) in respect of any injury or damage
caused by Agritope's or its Affiliates', or sublicensees' use
or exploitation of the Collection, the Licensed Patents, the
Salk Program Technology, the Salk Background Technology, or
any Licensed Products. With respect to any matter for which
Agritope has indemnified Salk hereunder, Agritope shall be
afforded the right to control the defense of all actions, to
enter into all settlements, judgments or other arrangements in
respect thereof. Salk agrees to notify Agritope promptly after
it becomes aware of any claim, action or proceeding by a third
party and to co-operate with Agritope, at Agritope's expense,
in any defense or prosecution thereof.
10.6 Before the first commercial sale of a Licensed Product,
Agritope agrees to procure and maintain comprehensive product
liability insurance against any claims or expenses for which
it is obligated to indemnify Salk as provided above. Such
insurance shall be in an amount not less than [ * ] per
incident and [ * ] annual aggregate.
10.7 THE FOREGOING WARRANTIES AND INDEMNITIES ARE IN LIEU OF, AND
THE PARTIES EACH DISCLAIM, ALL OTHER WARRANTIES, EXPRESS,
IMPLIED OR ARISING BY LAW, INCLUDING WITHOUT LIMITATION ANY
IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A
PARTICULAR PURPOSE. EXCEPT AS EXPLICITLY STATED HEREIN,
NEITHER PARTY WILL BE LIABLE FOR ANY CONSEQUENTIAL OR
INCIDENTAL DAMAGES.
11. MISCELLANEOUS.
11.1 With the exception of the 1997 Option and Research Agreement
(which agreement shall remain in full force and effect in
accordance with its terms and shall not be modified or
affected by this Agreement or by the conduct of the Research
Program, except as described in Section 3.5), this Agreement
constitutes the entire agreement and supersedes all prior
[ * ] = Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
13 July 99 Page 23
agreements and understandings, both written and oral, between
the parties hereto with respect to the subject matter hereof.
11.2 This Agreement shall be binding upon and inure to the benefit
of the parties hereto and their successors and assigns.
11.3 All notices, requests or other communication provided for or
permitted hereunder shall be given in writing and shall be
hand delivered or sent by facsimile, reputable courier or by
registered or certified mail, postage prepaid, return receipt
requested, to the address set forth on the signature page of
this Agreement, or to such other address as either party may
inform the other of in writing. Notices will be deemed
delivered on the earliest of transmission by facsimile, actual
receipt or three days after mailing as set forth herein.
11.4 Any terms of this Agreement may be amended, modified or waived
only in a writing signed by both parties.
11.5 If any provision of this Agreement shall be held invalid,
illegal or unenforceable, such provision shall be enforced to
the maximum extent permitted by law and the parties'
fundamental intentions hereunder, and the remaining provisions
shall not be affected or impaired.
11.6 Nothing herein contained shall constitute this a joint venture
agreement or constitute either party as the partner, principal
or agent of the other, this being an Agreement between
independent contracting entities. Neither party shall have the
authority to bind the other in any respect whatsoever to third
parties. Except as provided herein, nothing contained in this
Agreement shall be construed as conferring any right on either
party to use any name, trade name, trademark or other
designation of the other party hereto, unless the express,
written permission of such other party has been obtained.
11.7 This Agreement shall be governed by, and construed and
enforced in accordance with, the laws of California without
regard to its conflict of laws rules.
11.8 If the parties fail to reach agreement with respect to a
dispute or difference (other than as to a question relating to
patent validity), between the parties arising out of or in
connection with this Agreement, the dispute or difference will
be determined by arbitration in San Francisco, California, in
accordance with the Non-Administered Arbitration Rules &
Commentary (Amended 1993) of the CPR Institute for Dispute
Resolution by an independent and impartial arbitrator, who
(unless the parties agree otherwise) shall have had both
training and experience as an arbitrator of commercial
licensing matters and who shall be, and for at least ten years
shall have been, a partner, shareholder or member in a highly
13 July 99 Page 24
respected law firm headquartered in the United States. If the
parties to this Agreement cannot agree on the arbitrator, then
the arbitrator will be selected by the President of the CPR
Institute for Dispute Resolution in accordance with the
criteria set forth in the preceding sentence. The arbitrator
may decide any issue as to whether, or as to the extent to
which, any dispute is subject to the arbitration and other
dispute resolution provisions in this Agreement. The
arbitrator must base the award on the provisions of this
Agreement and must render the award in a writing which must
include an explanation of the reasons for such award. Any
arbitration pursuant to this section will be governed by the
substantive laws of California applicable to contracts made
and to be performed in that state, without regard to conflicts
of law rules, and by the arbitration law of the Federal
Arbitration Act (9 U.S.C. ss.1 et seq.). Judgment upon the
award rendered by the arbitrator may be entered by any court
having jurisdiction thereof. The statute of limitations of
California applicable to the commencement of a lawsuit will
apply to the commencement of an arbitration under this
Section. All fees, costs and expenses of the arbitrators, and
all other costs and expenses of the arbitration, will be
shared equally by the parties to this Agreement unless such
parties agree otherwise or unless the arbitrator in the award
assesses such costs and expenses against one of such parties
or allocates such costs and expenses other than equally
between such parties. Each party to this Agreement
acknowledges receipt of a copy of the Non-Administered
Arbitration Rules & Commentary (Amended 1993) of the CPR
Institute for Dispute Resolution. Notwithstanding the
foregoing, either party may, on good cause shown, seek a
temporary restraining order and/or a preliminary injunction
from a court of competent jurisdiction, to be effective
pending the institution of the arbitration process and the
deliberation and award of the arbitrator.
IN WITNESS WHEREOF, the parties hereto have caused their duly
authorized officers to execute this Agreement as of the date first written
above.
THE SALK INSTITUTE FOR AGRITOPE, INC.
BIOLOGICAL STUDIES
By: /s/▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇ By: /s/▇▇▇▇▇▇ ▇. Ferrov
Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇
Title: Vice President IPTT President
Address: Address:
10010 North ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇.
▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Fax: ▇▇▇-▇▇▇-▇▇▇▇ Fax: ▇▇▇-▇▇▇-▇▇▇▇
Attn: V.P. IPTT Attn: President
13 July 99 Page 25
Schedule 1.1: Additional Activation Tagging References
[ * ]
[ * ] = Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
13 July 99 Page 26
EXHIBIT A
LISTED SALK BACKGROUND PATENTS
[ * ]
[ * ] = Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
13 July 99 Page 27