Exhibit 99.9
**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
NOTE: REDACTED PORTIONS HAVE BEEN MARKED WITH ******.
RESTATED CRY1AB GENE
LICENSE AGREEMENT
EFFECTIVE AS OF THE 24TH DAY OF AUGUST 2004
BETWEEN
SYNGENTA CROP PROTECTION AG
AND
DELTA AND PINE LAND COMPANY
TABLE OF CONTENTS
SECTION 1 -- BACKGROUND.................................................1
SECTION 2 -- INTERPRETATION.............................................1
2.1 DEFINITIONS.................................................1
2.2 STATUTORY REFERENCES.......................................13
2.3 DEFINED TERMS..............................................14
SECTION 3 -- LICENSES..................................................14
3.1 LICENSE TO CRY1AB GENE.....................................14
3.2 LICENSE TO PRODUCE AND SELL LICENSED COMMERCIAL SEED.......14
3.3 LICENSE TO MULTIPLY LICENSED COMMERCIAL SEED...............14
3.4 EX-U.S. SUBLICENSES........................................15
3.5 RIGHTS RETAINED BY SYNGENTA................................15
3.6 COMBINED GENE COTTON SEED..................................19
3.7 CONDITIONS ON LICENSES.....................................20
3.8 GENE TRADEMARK.............................................22
3.9 THIRD PARTY VIOLATIONS OR INVALIDITY OF RESTRICTIONS
ON SUBLICENSE..............................................23
SECTION 4 -- COMMERCIAL DEVELOPMENT ACTIVITIES OF THE PARTIES..........23
4.1 COMMERCIAL DEVELOPMENT PLAN................................23
4.2 CONSULTATION...............................................24
4.3 GENE PROTECTION AND REGULATORY ACTIVITIES..................24
4.4 SEED DEVELOPMENT AND COMMERCIALIZATION RESPONSIBILITIES....31
4.5 LICENSE MANAGEMENT COMMITTEE...............................34
SECTION 5 -- OWNERSHIP OF TECHNOLOGY...................................40
5.1 SYNGENTA TECHNOLOGY AND LICENSED PATENT RIGHTS.............40
5.2 D&PL TECHNOLOGY............................................40
5.3 SAFETY, TOXICOLOGY AND EFFICACY DATA.......................40
5.4 USE OF DATA................................................41
SECTION 6 -- TECHNOLOGY FEES AND ROYALTY...............................41
6.1 TECHNOLOGY FEE.............................................41
6.2 COMPENSATION TO SYNGENTA FOR LICENSE TO THE GENE...........46
6.3 ROYALTY PERIOD.............................................46
SECTION 7 -- BUSINESS RECORDS/PAYMENTS.................................47
7.1 D&PL BUSINESS RECORDS......................................47
7.2 D&PL REPORTS AND PAYMENTS..................................48
7.3 SYNGENTA BUSINESS RECORDS..................................48
7.4 SYNGENTA REPORTS AND PAYMENTS..............................49
7.5 PAYMENT ADDRESS............................................50
7.6 PAYMENTS...................................................50
7.7 INTEREST ON OUTSTANDING BALANCES...........................51
7.8 SYNGENTA PATENT RECORDS....................................51
SECTION 8 -- CONFIDENTIALITY...........................................52
8.1 NON-DISCLOSURE OF CONFIDENTIAL INFORMATION.................52
8.2 PERIOD OF CONFIDENTIALITY..................................52
8.3 USES OF CONFIDENTIAL INFORMATION...........................53
SECTION 9 -- FORCE MAJEURE.............................................54
9.1 FORCE MAJEURE..............................................54
SECTION 10 -- TERM AND TERMINATION.....................................55
10.1 TERM OF LICENSES...........................................55
10.2 TERMINATION................................................55
10.3 BREACH OF OBLIGATIONS......................................55
10.4 DEFAULT ON PAYMENT.........................................56
10.5 EFFECT OF TERMINATION......................................56
10.6 SURVIVAL OF COVENANTS......................................56
SECTION 11 -- WARRANTIES AND WARRANTY LIMITATIONS......................56
11.1 SYNGENTA WARRANTIES........................................56
11.2 D&PL WARRANTIES............................................58
11.3 MUTUAL WARRANTIES..........................................58
11.4 NO OTHER WARRANTIES........................................58
11.5 EXCLUSIVE REMEDY...........................................59
SECTION 12 -- PATENT INFRINGEMENT......................................60
SECTION 13 -- CLAIMS BY VENDEES FOR FAILURE OF GENE PERFORMANCE........60
SECTION 14 -- GENERAL..................................................60
14.1 ASSIGNMENT OF D&PL'S RIGHTS AND OBLIGATIONS................60
14.2 ASSIGNMENT OF SYNGENTA'S RIGHTS AND OBLIGATIONS............61
14.3 RELATION OF PARTIES........................................61
14.4 INTEGRATION OF CONTRACT....................................61
14.5 WAIVERS AND AMENDMENTS.....................................62
14.6 HEADINGS...................................................62
14.7 REFERENCES TO SECTIONS, SUBSECTIONS AND EXHIBITS...........62
14.8 PARTIAL INVALIDITY.........................................62
14.9 GOVERNING CONTRACT LAW.....................................63
14.10 GOVERNING PATENT LAW.......................................63
14.11 NOTICES....................................................63
14.12 DISPUTE RESOLUTION.........................................64
14.13 INCORPORATION OF EXHIBITS..................................66
EXHIBITS
EXHIBIT A - LICENSED PATENT RIGHTS
EXHIBIT B - CRY1AB GENE TRADEMARK LICENSE AGREEMENT
EXHIBIT C - ******
EXHIBIT D - AGRONOMIC CRITERIA
EXHIBIT E - SEED PURITY STANDARDS
EXHIBIT F - PRICING REGIONS IN THE UNITED STATES
EXHIBIT G - SCHEDULE OF PAYMENTS UNDER SUBSECTION 10.2(D)
EXHIBIT H - CERTAIN HERBICIDE TOLERANCE GENE(S)
EXHIBIT I - ******
EXHIBIT J - PERFORMANCE REQUIREMENTS
EXHIBIT K - PROVISIONS RELATED TO MONSANTO
EXHIBIT L - TERMINATION
EXHIBIT M - ******
CRY1AB GENE LICENSE AGREEMENT
THIS RESTATED Cry1Ab GENE LICENSE AGREEMENT ("LICENSE AGREEMENT") is
effective as of the 24th day of August 2004 (the "EFFECTIVE DATE") by and
between SYNGENTA CROP PROTECTION AG, having a place of business at
Schwarzwaldallee 215, CH - 4058, Basel, Switzerland, and DELTA AND PINE
LAND COMPANY, having a place of business at One Cotton Row, Scott,
Mississippi 38772.
SECTION 1 -- BACKGROUND
1.1 SYNGENTA has developed the Cry1Ab GENE which is useful in the
production of genetically-modified cotton plants exhibiting INSECT
RESISTANCE and also possesses certain know-how and germplasm relating to
such cotton plants.
1.2 SYNGENTA and D&PL desire to enter into a license agreement under
which D&PL would be granted a worldwide license under certain patents to
which SYNGENTA has rights to produce and sell LICENSED COMMERCIAL SEED
containing the Cry1Ab GENE and to sublicense cotton farmers the right to
use LICENSED COMMERCIAL SEED exhibiting INSECT RESISTANCE to produce a
single commercial cotton crop.
SECTION 2 -- INTERPRETATION
2.1 DEFINITIONS. In this LICENSE AGREEMENT, unless the context
otherwise requires:
2.1.1 The term "AFFILIATE" means any corporation, firm, limited
liability company, partnership or other entity that directly or indirectly
CONTROLS or is CONTROLLED by or is under common CONTROL with another
corporation, firm, limited liability company, partnership or other entity;
provided that, any other provisions hereof notwithstanding, (a) a company
organized to operate a cotton seed business in a country where DELTA AND
PINE LAND COMPANY is prohibited by local laws or regulations from owning
fifty percent (50%) or more of the voting stock or equity interests of such
company, DELTA AND PINE LAND COMPANY owns, directly or indirectly, the
maximum amount of voting stock it is permitted to own in such company,
under local laws and regulations, shall be considered an AFFILIATE of DELTA
AND PINE LAND COMPANY and [Text in Item 1 of Exhibit K].
2.1.2 The term "AGRONOMIC CRITERIA" means the standard for the
agronomic and commercial acceptability as to yield, fiber quality and
disease resistance which must be satisfied by cultivars of LICENSED
COMMERCIAL SEED offered for COMMERCIAL SALE as set forth in Exhibit D to
this LICENSE AGREEMENT, as the same may be amended in accordance with
Subsection 4.4(a) of this LICENSE AGREEMENT.
2.1.3 [Text in Exhibit I]
2.1.4 The term "COMBINED GENE COTTON SEED" means a LICENSED
COMMERCIAL SEED which contains one or more NON-SYNGENTA GENE(S).
2.1.5 The term "COMMERCIAL DEVELOPMENT" means the evaluation of a
particular Cry1Ab GENE EVENT (either alone or in combination with any other
particular SYNGENTA GENE(S) and/or NON-SYNGENTA GENE(S)), (a) by D&PL in
DELTAPINE CULTIVARS; (b) by D&PL'S sublicensees in DELTAPINE CULTIVARS or
in SUBLICENSEE CULTIVARS; (c) if permitted under this LICENSE AGREEMENT, by
or for SYNGENTA in cultivars other than DELTAPINE CULTIVARS; or (d) if
permitted under this LICENSE AGREEMENT, by a third party licensed by
SYNGENTA in such third party's cultivars, pursuant to the COMMERCIAL
DEVELOPMENT PLAN after a determination is made in accordance with
Subsection 4.4(b) of this LICENSE AGREEMENT that the particular Cry1Ab GENE
EVENT has exhibited the criteria for COMMERCIAL INSECT RESISTANCE.
2.1.6 The term "COMMERCIAL DEVELOPMENT PLAN" means the plan for
development of LICENSED COMMERCIAL SEED to be adopted in accordance with
Subsection 4.4(a) of this LICENSE AGREEMENT as the same may be amended from
time to time in accordance with Section 4 of this LICENSE AGREEMENT.
2.1.7 The term "COMMERCIAL INSECT RESISTANCE" means LEPIDOPTERAN
RESISTANCE meeting the criteria for LEPIDOPTERAN RESISTANCE in LICENSED
COMMERCIAL SEED sold for planting in THE TERRITORY or in any particular
part of THE TERRITORY as set forth in the COMMERCIAL DEVELOPMENT PLAN
adopted in accordance with Subsection 4.4(a) of this LICENSE AGREEMENT.
2.1.8 The term "COMMERCIAL SALE" with respect to a GENE means
sale or other transfer for value of cotton seed containing such GENE for
use by LICENSED GROWERS in producing a single commercial commodity cotton
crop (other than sale or other transfer for testing or increase on behalf
of the transferor).
2.1.9 [Text in Exhibit J]
2.1.10 The term "COMPETITIVE TECHNOLOGY FEE ADJUSTMENTS" means
the amounts established in accordance with Section 6 that D&PL may provide
as adjustments to the TECHNOLOGY FEES to meet competitive conditions in the
marketplace in a particular PRICING REGION.
2.1.11 The term "CONTROL," "CONTROLS," OR "CONTROLLED" means with
respect to any corporation, the ownership of fifty percent (50%) or more of
the voting stock of a corporation and with respect to any other legal
entity, ownership of fifty percent (50%) or more of total equity interests;
provided, however, that a person, partnership, corporation or other legal
entity that controls another person, partnership, corporation or other
legal entity shall be considered as having control over every person,
partnership, corporation or other legal entity that such controlled person,
partnership, corporation or other legal entity controls.
2.1.12 The term "Cry1Ab GENE" means a GENE(S) and/or genetic
construct(s) inserted into the cotton genome that encode part or all of a
Cry1Ab protein.
2.1.13 The term "Cry1Ab GENE EVENT" means a transformation event
by which a Cry1Ab GENE is inserted in the genome of a sexually viable
cotton plant, including, but not limited to, the transformation events
designated by SYNGENTA as ****** and any back-up or additional Cry1Ab GENE
transformation events resulting from current or subsequent work by or on
behalf of SYNGENTA.
2.1.14 The term "Cry1Ab GENE TRADEMARK" means a trademark owned
by SYNGENTA relating to the Cry1Ab GENE.
2.1.15 The term "Cry1Ab GENE TRADEMARK LICENSE AGREEMENT" means
an agreement in substantially the form attached hereto as Exhibit B, as the
same may be completed and/or amended from time to time by written agreement
of the PARTIES on a country by country basis.
2.1.16 The term "D&PL" means, collectively, DELTA AND PINE LAND
COMPANY and its AFFILIATES, provided that if a notice is required to be
given by or to D&PL, or a document is to be executed by D&PL under Section
14.5, the term shall mean DELTA AND PINE LAND COMPANY.
2.1.17 [Text in Exhibit J]
2.1.18 The term "D&PL TECHNOLOGY" means any information, data,
know-how, technology, and germplasm that D&PL now owns or licenses (other
than from SYNGENTA) or hereafter develops, produces, makes, licenses in or
obtains (other than from SYNGENTA), relating to the breeding and
development of commercial varieties or hybrids of LICENSED COMMERCIAL SEED
or other varieties or hybrids of cotton. D&PL TECHNOLOGY shall not include
information, data, know-how, technology, or germplasm that has become part
of the public domain through no fault of SYNGENTA or which has been
provided to SYNGENTA, as evidenced by SYNGENTA'S written records, by a
third party having no obligation of confidentiality to D&PL with respect
thereto.
2.1.19 The term "DATE OF APPROVAL FOR COMMERCIAL SALE" with
respect to a particular Cry1Ab GENE EVENT means the date on which D&PL or
its ~ublicense(s) commences COMMERCIAL SALE by D&PL (or its ~ublicense(s)
of LICENSED COMMERCIAL SEED containing that Cry1Ab GENE EVENT in a
particular country in THE TERRITORY or SYNGENTA or its licensee(s)
commences COMMERCIAL SALE of LICENSED COMMERCIAL SEED in a particular
country pursuant to Subsection 4.3(k).
2.1.20 The term "DATE OF GOVERNMENT APPROVAL" with respect to any
country in THE TERRITORY with respect to a Cry1Ab GENE EVENT means the date
on which GOVERNMENT APPROVAL of such Cry1Ab GENE EVENT has been obtained in
that country.
2.1.21 The term "DEADLOCK MATTER" shall have the meaning ascribed
to that term in Section 4.5(d)(v).
2.1.22 The term "DELTA AND PINE LAND COMPANY" means Delta and
Pine Land Company, a company incorporated in the State of Delaware, USA,
having offices at One Cotton Row, Scott, Mississippi 38772, USA.
2.1.23 The term "DELTAPINE Cry1Ab CULTIVAR" means a DELTAPINE
CULTIVAR which contains the Cry1Ab GENE.
2.1.24 The term "DELTAPINE CULTIVAR" means a cultivar of cotton
produced from germplasm which D&PL has the right to use for plant-breeding
purposes and/or which D&PL otherwise has the right to use for COMMERCIAL
SALE.
2.1.25 The term "DISPUTE" shall have the meaning ascribed to the
term in Section 14.12.
2.1.26 [Text in Exhibit I]
2.1.27 The term "EFFECTIVE DATE" means the date first above
written.
2.1.28 The term "EXECUTIVE MANAGEMENT COMMITTEE" shall have the
meaning ascribed to that term in Section 4.5(d)(v).
2.1.29 The term "EXPIRATION," with respect to any patent, means
the earlier of the date upon which such patent expires or upon which an
applicable claim is cancelled, or declared invalid or permanently
unenforceable by any court or administrative agency of competent
jurisdiction from which no appeal has or can be taken.
2.1.30 The term "FTE RATE" means cost of a full-time equivalent
person-year, based on a total of one thousand eight hundred forty (1,840)
hours of work per year by a person appropriately qualified for the tasks to
be completed, and who holds a Ph.D. or Masters of Science (or is otherwise
appropriately trained) in an appropriate discipline, which rate shall equal
****** in base year 2004, and which rate shall be adjusted annually
beginning January 1, 2005, by any percentage change in the Consumer Price
Index of All Urban Consumers (CPI-U) published by the United States
Department of Labor.
2.1.31 The term "GENE" means a DNA sequence contained in the
genome of a sexually viable cotton plant.
2.1.32 The term "GENE EQUIVALENCY STANDARDS" means standards,
protocols, and processes for verification of insecticide protein expression
in cultivars of LICENSED COMMERCIAL SEED proposed for COMMERCIAL SALE in
accordance with standards set forth in the COMMERCIAL DEVELOPMENT PLAN
adopted in accordance with Subsection 4.4(a) of this LICENSE AGREEMENT.
2.1.33 The term "GOVERNMENT APPROVAL" with respect to a Cry1Ab
GENE EVENT (or other GENE event) in a particular country means that
official clearances or written approvals for COMMERCIAL SALE of seed to
produce genetically-transformed cotton plants containing that Cry1Ab GENE
EVENT (or other GENE event) have been obtained from all government agencies
in that country which, as of that date, are required for the import,
testing, development, production, use, and sale of such plants or seed
produced therefrom under applicable laws as required for D&PL (or its
sublicensees) activities under this LICENSE AGREEMENT, provided that, to
constitute GOVERNMENT APPROVAL, such clearances or approvals shall not
place materially greater regulatory restrictions or economic burdens that
adversely affect the COMMERCIAL SALE or use of the subject Cry1Ab GENE
EVENT than on any other LEPIDOPTERAN-ACTIVE GENE available for COMMERCIAL
SALE in that country (unless this requirement is waived by notice from D&PL
to SYNGENTA), provided, further, however, that nothing in this LICENSE
AGREEMENT shall require SYNGENTA to obtain approval from any agency with
respect to the issuance of seed certificates or phytosanitary certificates
or certificates of plant variety protection under the U. S. Plant Variety
Protection Act or any other laws relating to plant variety protection,
which approvals, when appropriate or required, shall be the responsibility
of D&PL (or its ~ublicense).
2.1.34 The term "HERBICIDE TOLERANCE GENE" means a GENE which
does not occur naturally in cotton that causes cotton plants not to sustain
economically significant damage when exposed to a glyphosate-based
herbicide.
2.1.35 The term "INSECT RESISTANCE" or "INSECT RESISTANCE TRAIT"
means the property of cotton plants (a) to exhibit LEPIDOPTERAN RESISTANCE
due to the presence of LEPIDOPTERAN-ACTIVE GENE(S) and/or (b) to be toxic
to insect pests of cotton other than LEPIDOPTERAN INSECTS due to the
presence of NON-LEPIDOPTERAN ACTIVE GENE(S).
2.1.36 [Text in Exhibit J]
2.1.37 [Text in Exhibit J]
2.1.38 The term "LEPIDOPTERAN-ACTIVE GENE" means a GENE
containing one or more sequences encoding one or more toxins which do(es)
not occur naturally in cotton, that provides LEPIDOPTERAN RESISTANCE.
2.1.39 The term "LEPIDOPTERAN INSECTS" means a group of cotton
bollworms including: Helicoverpa zea (Cotton Bollworm), Heliothis virescens
(Tobacco Budworm), and Pectinophora gossypiella (Pink Bollworm).
2.1.40 The term "LEPIDOPTERAN RESISTANCE" means the property of
cotton plants to be toxic to LEPIDOPTERAN INSECTS due to the presence of a
gene(s) that encodes a toxin which does not occur naturally in cotton.
2.1.41 The term "LICENSE ACQUISITION AGREEMENT" means the
Restated License Acquisition Agreement dated August 24, 2004, between
SYNGENTA CROP PROTECTION AG and DELTA AND PINE LAND COMPANY whereby D&PL
acquired the right to licenses to certain GENES, including the right to the
LICENSES to the Cry1Ab GENE more particularly described herein.
2.1.42 The term "LICENSE MANAGEMENT COMMITTEE" means the
committee established by D&PL and SYNGENTA pursuant to Subsection 4.5 of
this LICENSE AGREEMENT.
2.1.43 The term "LICENSE PURCHASE PRICE" means all amounts
payable by D&PL to SYNGENTA under the LICENSE ACQUISITION AGREEMENT and
allocated to the acquisition of the LICENSES set forth in this LICENSE
AGREEMENT.
2.1.44 The term "LICENSED COMMERCIAL SEED" means cotton seed
which incorporates the Cry1Ab GENE.
2.1.45 The term "LICENSED GROWER(S)" means any person or entity
which has been sublicensed by D&PL or its sublicensees (whether through a
grower license agreement executed by such person or entity or by wording on
container labels or sales documents used in lieu of execution of grower
license agreement) under the LICENSED PATENT RIGHTS to use LICENSED
COMMERCIAL SEED for production of a single commercial cotton crop.
2.1.46 The term "LICENSED PATENT RIGHTS" means the patents and
patent applications listed in Exhibit A which are owned by SYNGENTA or
licensed to SYNGENTA (including any patent applications and patents filed,
granted or issued pursuant to any parent, extension, confirmation,
continuation, registration, reexamination, continuation-in-part, reissue,
or divisional thereof anywhere in the world), and any additional such
patent rights of SYNGENTA or of others which may be added to said Exhibit A
by SYNGENTA by written notice to D&PL. LICENSED PATENT RIGHTS shall include
any patent rights which are acquired by SYNGENTA with the right to license
or sublicense to D&PL during the term of this LICENSE AGREEMENT which, in
the absence of the LICENSES, potentially would be infringed by D&PL'S
performance hereunder or by D&PL'S making, using or selling LICENSED
COMMERCIAL SEED or other activities hereunder. SYNGENTA shall periodically
update Exhibit A with any such patent rights which have been newly acquired
by SYNGENTA. It is the intention of the PARTIES that D&PL be licensed under
all patents and applications owned or controlled by SYNGENTA (with the
right to grant rights to D&PL) that D&PL requires for performance under
this LICENSE AGREEMENT. The listing of a patent or patent application on
Exhibit A shall not be an admission by either PARTY that such patent would,
in the absence of license, be infringed. Similarly, the failure to list a
patent or patent application on Exhibit A shall not necessarily be
determinative of whether such patent or patent application is a LICENSED
PATENT RIGHT.
2.1.47 The term "LICENSES" means the licenses granted to D&PL
under Section 3.
2.1.48 [Text in Item 2 of Exhibit K]
2.1.49 [Text in Item 2 of Exhibit K]
2.1.50 [Text in Item 2 of Exhibit K]
2.1.51 [Text in Item 2 of Exhibit K]
2.1.52 [Text in Item 2 of Exhibit K]
2.1.53 [Text in Item 2 of Exhibit K]
2.1.54 The term "NET TECHNOLOGY FEE REVENUE" means the TECHNOLOGY
FEES, as modified by COMPETITIVE TECHNOLOGY FEE ADJUSTMENTS, collected for
the license or use of the Cry1Ab GENE in LICENSED COMMERCIAL SEED, less
amounts paid for (a) the reasonable costs of grower licensing and
collection of TECHNOLOGY FEES, (b) payments, discounts and rebates to
distributors and retailers, (c) payments, discounts and rebates to growers
under crop destruct, crop replant, SEED DROP RATE exception, refugia refund
(i.e. price adjustments or rebates based on the grower's choice among
refugia options), trait investment, regional price adjustment (i.e. price
adjustments or rebates targeted at encouraging growers in specific
geographical areas to use LICENSED COMMERCIAL SEED containing Cry1Ab GENES)
and other grower incentive programs, and (d) advertising (e.g., electronic
media and print) which, as to (a) through (d), (i) are directly and
exclusively attributable to the licensing or use of the Cry1Ab GENE
(including the HERBICIDE TOLERANCE GENE as described in Exhibit H with
which the Cry1Ab GENE is stacked, except to the extent paid or reimbursed
by a party other than SYNGENTA or D&PL) or, if attributable in part to the
licensing and use of the Cry1Ab GENE and in part to the licensing or use of
another SYNGENTA GENE and/or NON-SYNGENTA GENE (other than the HERBICIDE
TOLERANCE GENE as described in Exhibit H with which the Cry1Ab GENE is
stacked), have been allocated based on the amounts charged for use of each
of the respective GENES (provided that amounts deductible in determining
NET TECHNOLOGY FEE REVENUE shall not include expenses for promoting the use
of any particular glyphosate-based herbicide), and (ii) have been approved
by the LICENSE MANAGEMENT COMMITTEE in accordance with Subsection 4.4(c)
hereof and (iii) have been paid to distributors, retailers, and/or growers
(or, in the case of advertising programs, expended) in accordance with
their terms and conditions and in each case in connection with the license
or use of the Cry1Ab GENE and/or such other GENE(S) in LICENSED COMMERCIAL
SEED, and calculated in accordance with U.S. generally accepted accounting
principles, consistently applied, during the applicable period for which a
ROYALTY payment is being determined. There shall be no duplication of
reimbursement or payment for such costs and expenses under this LICENSE
AGREEMENT and under any RELATED AGREEMENT. For purposes of payments to be
made under Section 7, the amounts to be deducted under Subparts (a)-(d)
above to determine NET TECHNOLOGY FEE REVENUE may be estimated based on
accruals made in good faith and in accordance with generally accepted
accounting principles consistently applied by the applicable PARTY
incurring such expense and then trued-up on the next December 31 based on
the actual amounts paid for such items.
2.1.55 The term "NON-INSECT RESISTANCE GENE" means a GENE
containing one or more DNA sequences which do(es) not occur naturally in
cotton that cause(s) cotton plants to express a trait, other than INSECT
RESISTANCE, not found in cotton. NON-INSECT RESISTANCE GENES shall include
but are not limited to HERBICIDE TOLERANCE GENES.
2.1.56 The term "NON-LEPIDOPTERAN-ACTIVE GENE" means a GENE
containing one or more DNA sequences encoding one or more toxins, which
do(es) not occur naturally in cotton, that provide(s) resistance to insect
pests of cotton other than LEPIDOPTERAN INSECTS and do(es) not qualify as a
LEPIDOPTERAN-ACTIVE GENE.
2.1.57 The term "NON-SYNGENTA GENE" means a GENE not licensed to
D&PL by SYNGENTA expressing a trait not naturally occurring in cotton or
modulating expression of a characteristic naturally found in cotton.
2.1.58 The term "NON-Cry1Ab SYNGENTA LEPIDOPTERAN-ACTIVE GENE"
means a LEPIDOPTERAN-ACTIVE GENE (other than the Cry1Ab GENE) which is
licensed to D&PL by SYNGENTA.
2.1.59 The term "NON-Cry1Ab SYNGENTA LEPIDOPTERAN-ACTIVE GENE
EVENT" means a transformation event by which a NON-Cry1Ab SYNGENTA
LEPIDOPTERAN-ACTIVE GENE is inserted in the genome of a sexually viable
cotton plant.
2.1.60 The "PANEL" shall have the meaning ascribed to that term
in Section 14.12.
2.1.61 The term "PARTIES" shall mean SYNGENTA and D&PL, and
"PARTY" shall mean either SYNGENTA or D&PL, provided with respect to the
recipient of a notice or execution of documents under Subsection 14.5,
"PARTY" shall mean either of (and "PARTIES" shall mean both of) SYNGENTA
CROP PROTECTION AG and DELTA AND PINE LAND COMPANY.
2.1.62 [Text in Exhibit I]
2.1.63 [Text in Exhibit I]
2.1.64 The term "PRICING REGION" means (a) in the United States
of America, each of the geographic regions described in attached Exhibit F
(which Exhibit F may be amended by D&PL by notice to SYNGENTA on or before
September 15 of the calendar year before the commencement of the cotton
planting season in which such amended description of the PRICING REGIONS in
the United States of America will take effect) and (b) outside the United
States, each nation in which LICENSED COMMERCIAL SEED is marketed by D&PL
or its AFFILIATES, by D&PL'S ~ublicense(s), or if permitted under this
LICENSE AGREEMENT, by or on behalf of SYNGENTA and/or by a third party
licensed by SYNGENTA.
2.1.65 The term "RECIPIENT" means a party which receives
confidential information of another party as described in Section 8.
2.1.66 The term "RELATED AGREEMENTS" means this LICENSE
AGREEMENT, the LICENSE ACQUISITION AGREEMENT, and all other license
agreements entered into by D&PL and SYNGENTA pursuant to the LICENSE
ACQUISITION AGREEMENT, as such agreements may be amended from time to time
in writing.
2.1.67 The term "RESPONSIBLE PARTY" shall have the meaning
ascribed to that term in Subsection 4.5(d)(ii).
2.1.68 The term "ROYALTY" means the compensation to be paid by
D&PL to SYNGENTA for the LICENSES equal to the SYNGENTA ROYALTY PERCENTAGE
multiplied by the NET TECHNOLOGY FEE REVENUE.
2.1.69 The term "SEED DROP RATE" means the average number of
cotton seeds, as reasonably determined by D&PL, which cotton growers in a
particular PRICING REGION or in any distinct subdivision thereof typically
plant on an acre of farm land to achieve an appropriate plant population
for cotton production.
2.1.70 The term "SEED PURITY STANDARD" means the standard for
genetic purity of LICENSED COMMERCIAL SEED as set forth in Exhibit E to
this LICENSE AGREEMENT, as the same may be amended in accordance with
Subsection 4.4(a) of this LICENSE AGREEMENT.
2.1.71 The term "SPECIAL TECHNOLOGY FEE PANEL" shall have the
meaning ascribed to that term in Subsection 6.1(d)(iv).
2.1.72 The term "SUBLICENSEE CULTIVAR" means a cultivar of cotton
produced from germplasm which a third party that is sublicensed by D&PL
under this LICENSE AGREEMENT has the right to use for plant-breeding
purposes.
2.1.73 The term "SUBLICENSEE Cry1Ab CULTIVAR" means a SUBLICENSEE
CULTIVAR which contains a Cry1Ab GENE.
2.1.74 The term "SYNGENTA" means collectively, SYNGENTA CROP
PROTECTION AG and its AFFILIATES, including but not limited to SYNGENTA AG,
provided that if a notice is required to be given to SYNGENTA, or a
document is to be executed by SYNGENTA under Section 14.5, the term shall
mean SYNGENTA CROP PROTECTION AG.
2.1.75 The term "SYNGENTA AG" means Syngenta AG, a company
organized under the laws of Switzerland, having a place of business at
Schwarzwaldallee 215, CH - 4058, Basel, Switzerland.
2.1.76 The term "SYNGENTA GENE" means a GENE owned by, or
licensed to, SYNGENTA expressing a trait not naturally occurring in cotton
or modulating expression of a characteristic naturally found in cotton.
SYNGENTA GENES may consist of INSECT RESISTANCE GENES and NON-INSECT
RESISTANCE GENES.
2.1.77 The term "SYNGENTA ROYALTY PERCENTAGE" means thirty
percent (30%).
2.1.78 The term "SYNGENTA CROP PROTECTION AG" means Syngenta Crop
Protection AG, a company organized under the laws of Switzerland, having a
place of business at Schwarzwaldallee 215, CH - 4058, Basel, Switzerland.
2.1.79 The term "SYNGENTA TECHNOLOGY" means information, data,
know-how and technology which are owned by SYNGENTA or licensed to SYNGENTA
(other than by D&PL) that relates to the use of a Cry1Ab GENE in cotton
including, but not limited to, information and technology relating to cells
and seeds of cotton plants, DNA sequences and probes ~ublicens,
transformation methodology, tissue cultures, assays, residue analyses,
regeneration and selection procedures, plant genetic constituents, vectors
useful in transforming such genetic constituents, construction and use of
such vectors in cotton. SYNGENTA TECHNOLOGY shall not include information,
data, know-how, or technology that has become part of the public domain
through no fault of D&PL or which is or has been provided to D&PL as
evidenced by D&PL'S written records, by a third party having no obligation
of confidentiality to SYNGENTA with respect thereto.
2.1.80 The term "TECHNOLOGY" means SYNGENTA TECHNOLOGY and/or
D&PL TECHNOLOGY as appropriate.
2.1.81 The term "TECHNOLOGY FEE" means the consideration (in
whatever form of value capture) received from LICENSED GROWERS for the
rights to use the Cry1Ab GENE embodied in LICENSED COMMERCIAL SEED to
produce a single commercial cotton crop, the amount of which shall be
established as provided in Subsection 6.1.
2.1.82 [Text in Exhibit I]
2.1.83 The term "THE TERRITORY" means the world.
2.1.84 The term "UNIT" means a quantity of packaged delinted
cotton seed containing 250,000 seed; provided that in all calculations
involving UNITS, seed being processed or that is packaged in other size
containers shall be converted to 250,000 seed UNITS.
2.1.85 The term "VARIETAL NAME" means a word or combination of
words or other combination of letters or numbers which identifies a cotton
variety.
2.1.86 The term "VIP3A GENE" means a GENE(S) and/or genetic
construct(s) inserted into the cotton genome that encode part or all of a
VIP3A protein.
2.1.87 The term "VIP3A GENE EVENT" means a transformation event
by which a VIP3A GENE is inserted in the genome of a sexually viable cotton
plant.
2.2 STATUTORY REFERENCES. Each reference in this LICENSE AGREEMENT to
a statute or a provision of a statute shall be construed as a reference to
that statute or provision as it exists on the EFFECTIVE DATE, and any
amended or successor statute.
2.3 DEFINED TERMS. Terms appearing in all upper-case letters, other
than section headings and U.C.C.-related disclaimers of warranties, shall
have the meanings set forth in Subsection 2.1.
SECTION 3 -- LICENSES
3.1 LICENSE TO Cry1Ab GENE. SYNGENTA hereby grants to D&PL, and D&PL
hereby accepts, on and subject to the terms and conditions of this LICENSE
AGREEMENT, a license in THE TERRITORY, under the LICENSED PATENT RIGHTS and
SYNGENTA TECHNOLOGY, to sublicense LICENSED GROWERS to use LICENSED
COMMERCIAL SEED containing the Cry1Ab GENE (alone or in combination with
other SYNGENTA GENE(S) and/or NON-SYNGENTA GENE(S)) to produce a single
commercial cotton crop. The terms and conditions of such sublicense to
LICENSED GROWERS (whether in the form of grower license agreement executed
by LICENSED GROWERS or wording on container labels or sales documents used
in lieu of execution of grower license agreements) shall be recommended by
D&PL and adopted by the LICENSE MANAGEMENT COMMITTEE in accordance with
Subsection 3.7(e) and Subsection 4.4(c) of this LICENSE AGREEMENT.
3.2 LICENSE TO PRODUCE AND SELL LICENSED COMMERCIAL SEED. SYNGENTA
hereby grants to D&PL, and D&PL hereby accepts, on and subject to the terms
and conditions of this LICENSE AGREEMENT, a license in THE TERRITORY under
LICENSED PATENT RIGHTS and SYNGENTA TECHNOLOGY (a) to test, develop and
produce (directly or through the services of third parties) LICENSED
COMMERCIAL SEED, and (b) to sell (directly or through third party
distributors and dealers, by sublicense or otherwise) LICENSED COMMERCIAL
SEED to the LICENSED GROWERS sublicensed by D&PL under LICENSED PATENT
RIGHTS and SYNGENTA TECHNOLOGY to use the Cry1Ab GENE embodied in such
LICENSED COMMERCIAL SEED.
3.3 LICENSE TO MULTIPLY LICENSED COMMERCIAL SEED. The rights granted
to D&PL include the right to multiply LICENSED COMMERCIAL SEED (for
subsequent sale to LICENSED GROWERS) directly or through third party
contract growers selected by D&PL (in any country in THE TERRITORY where
SYNGENTA and/or D&PL have obtained all necessary government approvals for
such seed multiplication) and to carry out all other activities reasonably
necessary for the production for sale of LICENSED COMMERCIAL SEED.
3.4 EX-U.S. SUBLICENSES. In addition to sublicenses to LICENSED
GROWERS, distributors and dealers, in countries outside the United States
of America D&PL may grant sublicenses to third parties under the LICENSES
granted to D&PL in Subsections 3.1, 3.2 and 3.3. D&PL shall give notice to
SYNGENTA of the grant of such sublicenses. D&PL shall require any such
~ublicense to agree in writing to comply with the terms and conditions of
this LICENSE AGREEMENT applicable to D&PL in its sublicensed territory.
D&PL shall have no right to sublicense except as provided in Subsections
3.1, 3.2, 3.3 and 3.4. [Text in Item 3 of Exhibit K].
3.5 RIGHTS RETAINED BY SYNGENTA.
(a) Except as provided in Subsections 3.5(b) and 3.5(c) and in
Subsection 4.3(k), the LICENSES granted in Subsections 3.1, 3.2, 3.3 and
3.4 shall be the only licenses granted by SYNGENTA under the LICENSED
PATENT RIGHTS and SYNGENTA TECHNOLOGY in THE TERRITORY with respect to
Cry1Ab GENE in cotton.
(b) The provisions of Subsection 3.5(a) notwithstanding, except
as provided in Subsection 3.5(c)(i) and/or Subsection 4.3(k), during the
period prior to occurrence of one or more of the events expressly described
in Subsection 3.5(c)(ii), SYNGENTA shall retain a right, without the right
to grant licenses to third parties or to use the services of third parties
engaged in the breeding or sale of cotton planting seed other than to
provide (1) ordinary farming or harvesting services, (2) seed delinting and
ginning services, (3) laboratory services and/or (4) testing in field
trials conducted by United States Department of Agriculture and public
university trialists in the United States of America, to test, develop,
produce, and have produced, but not to sell or otherwise commercialize,
cottonseed containing the Cry1Ab GENE in any germplasm and cotton cultivars
owned by SYNGENTA or licensed by SYNGENTA from third parties. Use of the
services of third parties described in items (1) through (4) in the
preceding sentence shall be subject to an appropriate written
confidentiality agreement being executed by each such third party and, in
the case of the services described in items (2) and (3), receipt of D&PL's
prior written consent, which will not be unreasonably withheld or delayed.
SYNGENTA and its AFFILIATES shall not sell or otherwise commercialize
cottonseed containing the Cry1Ab GENE EVENT except as expressly permitted
in Subsection 3.5(c)(ii), and/or Subsection 4.3(k). Except [Text in Item 4
of Exhibit K] and, except pursuant to the COMMERCIAL DEVELOPMENT PLAN,
during the period prior to occurrence of one or more of the events
expressly described in Subsection 3.5(c)(ii), SYNGENTA shall not make and
shall use commercially reasonable efforts not to permit others to make
public comments concerning the performance of the Cry1Ab GENE in cotton
cultivars owned by SYNGENTA or third parties. Except pursuant to the
COMMERCIAL DEVELOPMENT PLAN, SYNGENTA shall not conduct and shall use
commercially reasonable efforts not to permit third parties to conduct
trials involving cultivars that incorporate a Cry1Ab GENE which utilize
DELTAPINE Cry1Ab CULTIVARS and/or SUBLICENSEE Cry1Ab CULTIVARS for
comparison or as checks or controls. SYNGENTA'S rights described in this
Subsection 3.5(b) shall include the right to stack the Cry1Ab GENE with any
other SYNGENTA GENE or NON-SYNGENTA GENE. Restrictions in this Subsection
3.5(b) on SYNGENTA'S rights to use and license the Cry1Ab GENE shall not
apply (i) after the occurrence of one or more of the events expressly
described in Subsection 3.5(c)(ii) or (ii) in any country in THE TERRITORY
after the date on which SYNGENTA'S right to receive the ROYALTY for use of
the Cry1Ab GENE expires in that country as provided in Subsection 6.3 or
(iii) in any country as to which D&PL has notified SYNGENTA or is deemed to
have notified SYNGENTA that it will that it will not commercialize LICENSED
COMMERCIAL SEED with the Cry1Ab GENE in that country in accordance with
Subsection 4.3(k).
(c) [Text in Exhibit J]
(d) Any other provision of Subsection 3.5 notwithstanding, so
long as D&PL or its corporate successor is selling LICENSED COMMERCIAL
SEED, SYNGENTA shall use commercially reasonable efforts not to sell and
shall use commercially reasonable efforts (which efforts shall include, but
shall not be limited to, incorporating such requirements in all licenses
with permitted licensees and using reasonable efforts to enforce such
requirements) not to permit any of its permitted licensees to sell (i) any
LICENSED COMMERCIAL SEED unless SYNGENTA or such licensee has confirmed to
its reasonable satisfaction that the subject cultivar of LICENSED
COMMERCIAL SEED meets the AGRONOMIC CRITERIA as reasonably determined by
SYNGENTA or such licensee based on equivalent testing required by D&PL to
verify compliance with AGRONOMIC CRITERIA, (ii) any LICENSED COMMERCIAL
SEED that does not meet the SEED PURITY STANDARDS and GENE EQUIVALENCY
STANDARDS applicable to LICENSED COMMERCIAL SEED sold by D&PL or its
sublicensees, nor (iii) any LICENSED COMMERCIAL SEED in any country in THE
TERRITORY in which GOVERNMENT APPROVAL has not been obtained; provided that
SYNGENTA shall have no liability to D&PL under this LICENSE AGREEMENT or
any RELATED AGREEMENT unless D&PL can prove that D&PL or its sublicensees
have suffered losses of sales of LICENSED COMMERCIAL SEED as a result of
SYNGENTA not having used such commercially reasonable efforts to prevent
the marketing of LICENSED COMMERCIAL SEED not satisfying the requirements
of this Subsection 3.5(d).
(e) If SYNGENTA has granted or hereinafter grants a commercial
license in THE TERRITORY under the LICENSED PATENT RIGHTS and the SYNGENTA
TECHNOLOGY to a third party, when such licensing is permitted under this
LICENSE AGREEMENT, for use of the Cry1Ab GENE, SYNGENTA shall notify D&PL
within thirty (30) days after SYNGENTA grants such license (provided that
SYNGENTA shall have the right not to identify the name of the third party
licensee). Upon D&PL's request made within thirty (30) days after receipt
of SYNGENTA'S notice and at D&PL's expense, D&PL shall have the right to
have a third party reasonably acceptable to SYNGENTA conduct a confidential
review of the third party license's terms and conditions to determine
whether the third party license considered as a whole, is more favorable to
the licensee than the terms and conditions of this LICENSE AGREEMENT
(without giving effect to payments under the LICENSE ACQUISITION
AGREEMENT). For the purpose of such review, SYNGENTA will promptly deliver
to such third party, upon request, on a confidential basis a copy of the
third party license with all references to the licensee deleted, certified
as a true and correct copy of such license by an authorized representative
of SYNGENTA. In the event the third party reviewer determines that the
license considered as a whole is more favorable to the licensee than the
terms and conditions of this LICENSE AGREEMENT, D&PL shall have the right
to review said certified copy of the third party license. Within thirty
(30) days after the reviewer notifies SYNGENTA and D&PL of such
determination, SYNGENTA shall have the option either (a) to modify the
license to third party licensee so that its terms and conditions are no
longer more favorable to the licensee than the terms of this LICENSE
AGREEMENT to D&PL or (b) to offer D&PL a revised license on the same terms
and conditions as to the third party licensee. The third party reviewer
shall examine either the modified third party license or the license
offered to D&PL, as the case may be, to confirm to D&PL SYNGENTA'S
compliance with the immediately preceding sentence. D&PL shall have the
right to substitute the revised license for this LICENSE AGREEMENT, by
notice to SYNGENTA within sixty (60) days after D&PL receives SYNGENTA'S
offer of a revised license. All of the terms and conditions of such
license, including the third party's ROYALTY terms, shall be effective from
and after the date of the third party license was granted; provided that
D&PL's obligations under the LICENSE ACQUISITION AGREEMENT and any RELATED
AGREEMENT shall not be affected and all obligations arising out of this
LICENSE AGREEMENT prior to the date of the substituted license become
effective shall continue and be unaffected. SYNGENTA'S obligation to so
notify D&PL shall remain in effect for so long as ROYALTIES are payable to
SYNGENTA in the country or countries as to which the third party license
pertains under the provisions of Subsection 6.3.
(f) For a period of ten (10) years from and after the EFFECTIVE
DATE, in the event SYNGENTA should decide to sell to a third party all or
any part of its existing cottonseed breeding program or any expansion
thereof or any cottonseed breeding program acquired hereafter, SYNGENTA
shall give notice to D&PL, including the terms and conditions of the
proposed sale, and D&PL shall have a right of first refusal to acquire the
same on the same terms and conditions offered by the third party. This
right of first refusal must be exercised by D&PL delivering written notice
within thirty (30) days after receipt of written notice by SYNGENTA of its
intent to sell such cottonseed breeding program to a third party, which
notice from D&PL shall include D&PL's exercise of the right of first
refusal and its binding commitment to purchase the cottonseed breeding
program on the same terms and conditions offered by the third party. If
D&PL does not exercise its right of first refusal, SYNGENTA may sell the
cottonseed breeding program on the terms stated in SYNGENTA'S notice to
D&PL. If the cottonseed breeding program is not sold on the stated terms,
D&PL shall continue to have the rights of first refusal as to any further
offers of sale as provided herein. Notwithstanding the foregoing, D&PL'S
right of first refusal shall not apply to a sale or transfer of all or
substantially all of the equity or assets of SYNGENTA CROP PROTECTION AG,
SYNGENTA AG or of SYNGENTA'S total business in a particular country or
countries involving substantial assets in fields other than cotton nor
shall it apply to a sale or transfer to an AFFILIATE of SYNGENTA as part of
a corporate restructuring or reorganization. Notwithstanding the foregoing,
D&PL's rights under this Subsection 3.5(f) shall terminate if any of the
events set forth in Subsection 3.5(C)(ii) occur or if this LICENSE
AGREEMENT is terminated as provided in Subsection 10.2.
3.6 COMBINED GENE COTTON SEED.
(a) D&PL may incorporate in LICENSED COMMERCIAL SEED any SYNGENTA
GENE that is licensed to D&PL and/or any NON-SYNGENTA GENE; [Text in Item 5
of Exhibit K]. Upon request from D&PL, SYNGENTA shall provide commercially
reasonable assistance to D&PL in obtaining any government clearances or
approvals (in addition to GOVERNMENT APPROVAL for the Cry1Ab GENE and/or
Cry1Ab GENE EVENT) required for sale by D&PL of COMBINED GENE COTTON SEED
as follows: (i) SYNGENTA shall provide such commercially reasonable
assistance at SYNGENTA'S cost (without reimbursement from D&PL) with
respect to government approvals, clearances and GOVERNMENT APPROVAL for
COMMERCIAL SALE of COMBINED GENE COTTON SEED incorporating a NON-SYNGENTA
GENE that is a HERBICIDE TOLERANCE GENE as described in Exhibit H, which
COMBINED GENE COTTON SEED has been developed by or on behalf of D&PL to
satisfy the requirements of Subsection 3.6(b) and (ii) as to any COMBINED
GENE COTTON SEED, other than that described in subpart (i) immediately
above, (A) such commercially reasonable assistance shall consist of
providing D&PL with access to relevant plant materials, purified Cry1Ab
proteins and all regulatory applications, regulatory data and other data
and information owned or developed by SYNGENTA prior to the EFFECTIVE DATE
and/or during the term of this LICENSE AGREEMENT for registration of the
Cry1Ab GENE or Cry1Ab GENE EVENTS with respect to which D&PL has rights to
use in cotton, and such additional assistance SYNGENTA may agree to provide
pursuant to mutual agreement between SYNGENTA and D&PL, and (B) D&PL shall
reimburse SYNGENTA for the reasonable costs of such assistance provided by
SYNGENTA at D&PL'S express request, which costs of assistance shall be
based on the then current FTE RATE plus reimbursement of out of pocket
third party expenses. In accordance with Subsection 4.3(h), the budget for
such assistance shall be agreed upon in advance of the assistance being
provided. SYNGENTA shall not be required to provide assistance under this
Subsection 3.6(a) with respect to any country after the date on which the
period in which SYNGENTA'S right to receive the ROYALTY for use of the
Cry1Ab GENE has commenced and has subsequently expired in that country as
provided in Subsection 6.3. Notwithstanding any other provision in this
LICENSE AGREEMENT, SYNGENTA shall not be obligated to obtain or to provide
assistance with respect to government clearances, approvals, or GOVERNMENT
APPROVAL for any COMBINED GENE COTTON SEED that requires regulatory and
other data with respect to a NON-SYNGENTA GENE contained therein or with
respect to the combination of the Cry1Ab GENE and/or other SYNGENTA GENE(S)
and the NON-SYNGENTA GENE(S) contained therein, unless D&PL at its cost and
expense, if any, provides SYNGENTA with access and rights to use such
regulatory and other data for purposes of obtaining or providing assistance
with respect to such government clearances, approvals or GOVERNMENT
APPROVAL of the COMBINED GENE COTTON SEED. Nothing in this LICENSE
AGREEMENT shall require SYNGENTA to obtain or to provide assistance with
respect to government clearances, approvals, or GOVERNMENT APPROVAL for a
NON-SYNGENTA GENE except as may be necessary in connection with GOVERNMENT
APPROVAL of a combination of such NON-SYNGENTA GENE with a SYNGENTA GENE.
(b) D&PL shall use commercially reasonable efforts to incorporate
in LICENSED COMMERCIAL SEED of DELTAPINE Cry1Ab CULTIVARS a NON-SYNGENTA
GENE that is a HERBICIDE TOLERANCE GENE.
3.7 CONDITIONS ON LICENSES. In partial consideration for the above
LICENSES:
(a) D&PL shall choose VARIETAL NAMES to designate cotton seed of
DELTAPINE Cry1Ab CULTIVARS.
(b) At SYNGENTA'S written request, D&PL shall conspicuously
display on packages and/or containers containing LICENSED COMMERCIAL SEED,
covered by the LICENSED PATENT RIGHTS and/or on invoices relating to such
LICENSED COMMERCIAL SEED to be sold or transferred to third parties, the
following notice, or a notice having substantially the same meaning and
effect, with the blanks appropriately filled in:
THESE SEEDS ARE COVERED UNDER [APPLICABLE COUNTRY]
PATENT(S) ___________. NO SUBLICENSE IS CONVEYED
UNDER SAID PATENTS TO USE THESE SEEDS SOLELY BY
THE PURCHASE OF SUCH SEEDS. A SUBLICENSE UNDER
SAID PATENTS TO USE THESE SEEDS TO PRODUCE A
SINGLE COTTON CROP MUST BE OBTAINED FROM [D&PL].
(c) D&PL shall use commercially reasonable efforts not to sell
and shall use commercially reasonable efforts (which efforts shall include,
but shall not be limited to, incorporating such requirements in all
licenses with sublicensees and using commercially reasonable efforts to
enforce such requirements) not to permit its sublicensees to sell LICENSED
COMMERCIAL SEED that does not meet the AGRONOMIC CRITERIA, SEED PURITY
STANDARDS and GENE EQUIVALENCY STANDARDS and which does not otherwise meet
the warranties set forth in Subsection 11.2(a) of this LICENSE AGREEMENT;
provided that D&PL shall have no liability to SYNGENTA under this LICENSE
AGREEMENT or any RELATED AGREEMENT (except as provided in Section 13)
unless SYNGENTA can prove that SYNGENTA has suffered losses as a result of
D&PL'S not having used such commercially reasonable efforts to prevent the
marketing of LICENSED COMMERCIAL SEED not satisfying the requirements of
Subsection 3.7(c). D&PL shall require in any sublicense granted pursuant to
Section 3.4 that the ~ublicense shall not sell LICENSED COMMERCIAL SEED of
DELTAPINE Cry1Ab CULTIVARS or SUBLICENSEE Cry1Ab CULTIVARS that does not
meet the AGRONOMIC CRITERIA, SEED PURITY STANDARDS, and GENE EQUIVALENCY
STANDARDS and which does not meet the warranties set forth in Subsection
11.2(a) of this LICENSE AGREEMENT.
(d) D&PL shall not modify, use, isolate, analyze, sequence or
characterize any DNA sequence contained in a Cry1Ab GENE that is physically
isolated from a seed, plant or cell culture that has been transferred by
SYNGENTA to D&PL, or progeny of such seed, plant or cell culture, for any
purpose without the prior written consent of SYNGENTA; provided, however,
that (i) D&PL may identify and utilize DNA sequences in furtherance of its
activities under this LICENSE AGREEMENT and (ii) the prohibitions of this
Subsection 3.7(d) shall not apply to modification or use of such DNA
sequences that has become part of the public domain in the subject country
through no fault of D&PL or which D&PL has received from a third party
having no obligation of confidentiality to SYNGENTA. As used in this
Subsection 3.7(d), material shall be deemed to have become part of the
public domain if a member of the public in the subject country can lawfully
sell or transfer the material without infringing a valid claim of a
LICENSED PATENT.
(e) D&PL and SYNGENTA, acting through the LICENSE MANAGEMENT
COMMITTEE in accordance with Subsection 4.4(c), will approve the terms and
conditions of any form of sublicense agreement to be executed by LICENSED
GROWERS or the wording of container labels or sales documents used in lieu
of execution of a grower license agreement, which may include provisions
required to maintain the GOVERNMENT APPROVALS (such as the requirement for
insect resistance management and stewardship), and restrictions on the
licensee to grow only a single commercial crop from the LICENSED COMMERCIAL
SEED purchased. D&PL will be responsible for enforcing the terms and
conditions of this sublicense agreement. D&PL shall use commercially
reasonable efforts to collect all TECHNOLOGY FEES due with respect to
LICENSED COMMERCIAL SEED sold by D&PL. D&PL shall require in sublicenses
with permitted sublicensees that such sublicensees use commercially
reasonable efforts to collect all TECHNOLOGY FEES due with respect to
LICENSED COMMERCIAL SEED sold by such sublicensees. SYNGENTA shall use
commercially reasonable efforts to collect, and shall require that any
permitted licensees (including but not limited to any third parties listed
in Item 6 of Exhibit K) to use commercially reasonable efforts to collect,
all TECHNOLOGY FEES due with respect to sales of LICENSED COMMERCIAL SEED
on which D&PL is entitled to receive a portion of the TECHNOLOGY FEE.
3.8 GENE TRADEMARK:
(a) D&PL shall conspicuously display the Cry1Ab GENE TRADEMARK
and accompanying logo on all packages of LICENSED COMMERCIAL SEED in
accordance with the Cry1Ab GENE TRADEMARK LICENSE AGREEMENT. SYNGENTA shall
utilize, and require any other permitted licensees to utilize, the same
Cry1Ab GENE TRADEMARK in the same manner prescribed in the Cry1Ab GENE
TRADEMARK LICENSE AGREEMENT on all packages of LICENSED COMMERCIAL SEED.
(b) It is agreed that the Cry1Ab GENE TRADEMARK shall be licensed
to D&PL on a non-exclusive royalty-free basis pursuant to the Cry1Ab GENE
TRADEMARK LICENSE AGREEMENT. The parties shall execute said Cry1Ab GENE
TRADEMARK LICENSE AGREEMENT following identification of the final graphic
form of the Cry1Ab GENE TRADEMARK by SYNGENTA.
(c) The Cry1Ab GENE TRADEMARK shall be utilized in the manner
specified in the Cry1Ab GENE TRADEMARK LICENSE AGREEMENT. SYNGENTA shall
inform D&PL of the final graphic form of the Cry1Ab GENE TRADEMARK to be
used on LICENSED COMMERCIAL SEED as soon as practicable, and in no event
later than June 15 prior to the marketing year in which the Cry1Ab GENE
TRADEMARK is to be used.
3.9 THIRD PARTY VIOLATIONS OR INVALIDITY OF RESTRICTIONS ON
SUBLICENSE. The use of LICENSED COMMERCIAL SEED or its progeny by LICENSED
GROWERS for purposes other than, or in addition to, production of a single
commercial commodity crop, unless expressly authorized by D&PL, shall not
be considered a breach of this LICENSE AGREEMENT by D&PL. The LICENSE
granted to D&PL shall not be revoked, diminished, or otherwise affected in
the event that the limitations and restrictions of the license or
sublicense to purchasers are found to be unenforceable as a matter of law,
in whole or in part, by any court or government agency.
SECTION 4 -- COMMERCIAL DEVELOPMENT ACTIVITIES OF THE PARTIES
4.1 COMMERCIAL DEVELOPMENT PLAN. SYNGENTA and D&PL shall cooperate in
the commercial development activities outlined in the COMMERCIAL
DEVELOPMENT PLAN. The COMMERCIAL DEVELOPMENT PLAN will be adopted, and may
be revised and amended as necessary, by SYNGENTA and D&PL, acting through
the LICENSE MANAGEMENT COMMITTEE, in accordance with the procedures for
decision making set forth in Subsection 4.5 of this LICENSE AGREEMENT. The
COMMERCIAL DEVELOPMENT PLAN shall include:
(a) Activities to obtain and maintain GOVERNMENT APPROVALS for
commercialization of LICENSED COMMERCIAL SEED including activities to be
undertaken by SYNGENTA at its expense (subject to reimbursement by D&PL to
the extent provided in this LICENSE AGREEMENT) and the field evaluation and
development of GENE EVENTS and field testing of LICENSED COMMERCIAL SEED to
be undertaken by D&PL at its expense; and
(b) Activities undertaken to provide LICENSED COMMERCIAL SEED for
COMMERCIAL SALE by D&PL and its permitted sublicensees.
The COMMERCIAL DEVELOPMENT PLAN shall also include specific activities
and standards, targeted timelines and the responsibility of each PARTY with
respect to each such activity.
4.2 CONSULTATION. SYNGENTA and D&PL shall consult regularly throughout
the term of this LICENSE AGREEMENT relative to activities affecting the
development and maintenance of sales of LICENSED COMMERCIAL SEED by D&PL
and its sublicensees, including but not limited to, SYNGENTA'S creation and
release of Cry1Ab GENE EVENTS for COMMERCIAL DEVELOPMENT, D&PL'S plans for
and progress in production and field testing of such LICENSED COMMERCIAL
SEED, intellectual property protection including activities to obtain and
maintain intellectual property rights covering Cry1Ab GENES, Cry1Ab GENE
EVENTS and related SYNGENTA TECHNOLOGY, freedom to operate, regulatory
approvals and other matters of mutual interest to the PARTIES. The LICENSE
MANAGEMENT COMMITTEE shall periodically meet as described in Section 4.5 to
discuss such activities and progress hereunder. Subject to any obligations
of confidentiality to third parties and subject to neither PARTY'S being
required to waive attorney client privilege, SYNGENTA and D&PL shall
provide each other with all data, reports, documents and information
reasonably required for the LICENSE MANAGEMENT COMMITTEE to perform its
responsibilities.
4.3 GENE PROTECTION AND REGULATORY ACTIVITIES.
As owner and licensor of the LICENSED PATENT RIGHTS and the
SYNGENTA TECHNOLOGY and in consideration for its share of the NET
TECHNOLOGY FEE REVENUE, SYNGENTA shall be responsible for activities to
support such licensing, including but not limited to the following:
(a) Subject to Section 12, SYNGENTA shall use commercially
reasonable efforts, necessary in its judgment, to obtain and maintain
protection of Cry1Ab GENE, Cry1Ab GENE EVENTS and related SYNGENTA
TECHNOLOGY and the Cry1Ab GENE TRADEMARK against unauthorized third party
use in the United States of America and in each other country in THE
TERRITORY designated by notice from D&PL to SYNGENTA as countries where
D&PL and its sublicensees intend to commercialize LICENSED COMMERCIAL SEED,
including payment of all expenses to prepare, file, prosecute, maintain and
defend product and/or process patents and trademark registrations that
cover the Cry1Ab GENE, Cry1Ab GENE EVENTS, and related SYNGENTA TECHNOLOGY
and the Cry1Ab GENE TRADEMARK in each such country and to prosecute legal
actions against infringement of such patent or trademark rights. SYNGENTA
shall perform such activities at its sole expense, provided that SYNGENTA
shall be entitled to reimbursement of its reasonable and necessary cost of
patent and trademark infringement actions from recoveries from infringing
third parties. Notwithstanding the above, any decision to prosecute
infringement actions and the extent of such actions shall be at the sole
discretion of SYNGENTA.
(b) SYNGENTA shall support the development and commercialization
of each Cry1Ab GENE EVENT approved for COMMERCIAL DEVELOPMENT by developing
gene and event specific PCR primers and protocols for detection of the
Cry1Ab GENE and each Cry1Ab GENE EVENT that is released for field testing,
developing event specific PCR primers and protocols for detection and
zygosity determination of each Cry1Ab GENE EVENT released to D&PL,
developing ELISA strip and plate antibodies and protocols for detection of
transgenic proteins produced by each Cry1Ab GENE released to D&PL and
providing technical training and support for the proper utilization of the
above tests by D&PL as D&PL may reasonably request.
(c) SYNGENTA shall use commercially reasonable efforts to perform
the regulatory and registration activities to obtain and maintain
GOVERNMENT APPROVAL of the Cry1Ab GENE and the particular Cry1Ab GENE
EVENT(S) designated for COMMERCIAL DEVELOPMENT in accordance with Section
4.4(b) hereof in the United States of America. SYNGENTA shall bear the
expense of such activities for GOVERNMENT APPROVAL in the United States of
America for the period from the EFFECTIVE DATE and ending six and one half
(6.5) years from the EFFECTIVE DATE, and thereafter so long as an event set
forth in Subsection 3.5(c)(ii) has not occurred, SYNGENTA shall bear such
expense for such GOVERNMENT APPROVAL in the United States of America
subject to reimbursement by D&PL for one hundred percent (100%) of such
expenses. [Text in Item 7 of Exhibit K]. Subject to SYNGENTA'S providing
D&PL with necessary information to determine the amount due for the subject
twelve (12) month period, D&PL shall pay its portion of such expenses to
SYNGENTA each year on the later of September 30 or thirty (30) days after
D&PL receives the necessary information from SYNGENTA to determine the
amount due.
(d) Subject to Subsection 4.3(g), for countries outside the
United States of America designated by D&PL in a written notice to SYNGENTA
as being those countries in which D&PL and its sublicensees intend to
commercialize the LICENSED COMMERCIAL SEED, SYNGENTA shall use commercially
reasonable efforts to perform the regulatory and registration activities to
obtain and maintain GOVERNMENT APPROVAL of the Cry1Ab GENE and the Cry1Ab
GENE EVENT(S), designated for COMMERCIAL DEVELOPMENT. The expenses shall be
borne by SYNGENTA subject to reimbursement by D&PL for one hundred percent
(100%) of such expenses, subject to Subsection 4.3(g), provided that if an
event set forth in Section 3.5(c)(ii) occurs, such expenses in each country
outside the United States of America in each twelve (12) month period
ending on August 31 shall be shared by D&PL and SYNGENTA on the basis of
the formula set forth in Subsection 4.3(c) based on TECHNOLOGY FEES from
sales of LICENSED COMMERCIAL SEED in the subject country during the subject
twelve (12) month period. Upon thirty (30) days notice, D&PL may revoke a
notice given to SYNGENTA under this Subsection 4.3(d) in which D&PL had
asked SYNGENTA to obtain and maintain GOVERNMENT APPROVAL of the Cry1Ab
GENE and Cry1Ab GENE EVENTS in a particular country provided that D&PL
shall reimburse SYNGENTA for one-hundred (100%) percent of the reasonable
costs of obtaining GOVERNMENT APPROVAL that have been incurred by or on
behalf of SYNGENTA or cannot reasonably be avoided as of the date of
receipt of such notice.
(e) Subject to the other provisions in Sections 3 and 4,
SYNGENTA'S activities under Subsections 4.3(c) and 4.3(d) will also include
using commercially reasonable efforts to (i) obtain import, movement and
release approvals and permits as may be necessary to permit D&PL or its
sublicensees or D&PL'S contract growers to conduct development and increase
activities prior to and after GOVERNMENT APPROVAL in the subject country
and (ii) compliance with any post-registration and approval requirements
imposed as a condition of GOVERNMENT APPROVAL in the subject country as to
which SYNGENTA has the responsibility to maintain such registrations or
approvals. SYNGENTA shall use commercially reasonable efforts to obtain
such GOVERNMENT APPROVALS and/or such import, movement and release
approvals and permits at the earliest practical date, provided, however,
SYNGENTA makes no representations or warranties to D&PL that SYNGENTA will
be able to obtain and/or maintain any such GOVERNMENT APPROVAL or such
import, movement and release approvals and permits or that SYNGENTA will be
able to obtain such GOVERNMENT APPROVAL or such import, movement and
release approvals and permits by the targeted dates which may be set forth
in the COMMERCIAL DEVELOPMENT PLAN or otherwise estimated. Subject to the
other provisions in Sections 3 and 4, SYNGENTA shall also provide
commercially reasonable assistance to D&PL with respect to import, movement
and release approvals, clearances, and permits necessary for D&PL to
conduct counterseason nurseries, trials and seed increases for DELTAPINE
Cry1Ab CULTIVARS in Costa Rica and other countries reasonably designated by
D&PL for counterseason nurseries, trials and seed increases whether or not
SYNGENTA is seeking GOVERNMENT APPROVAL in such countries.
(f) In consideration of SYNGENTA obtaining in any country outside
the United States of America designated by D&PL for SYNGENTA to seek
GOVERNMENT APPROVAL for the Cry1Ab GENE and Cry1Ab GENE EVENTS, D&PL shall
pay to SYNGENTA a milestone payment of ****** per country payable not later
than ninety (90) days after SYNGENTA obtains such GOVERNMENT APPROVAL,
gives notice thereof to D&PL and delivers to D&PL documents, reasonably
satisfactory to D&PL, evidencing that such GOVERNMENT APPROVAL has been
obtained, provided, however, it is understood by the PARTIES that SYNGENTA
may be requested by D&PL to obtain registration of other traits in the same
country pursuant to the RELATED AGREEMENTS and that D&PL shall be obligated
to pay SYNGENTA only one such milestone payment per country, regardless of
the number of GENES or GENE events for which SYNGENTA obtains GOVERNMENT
APPROVAL in such country under this LICENSE AGREEMENT and/or any of the
RELATED AGREEMENT(S). If D&PL has notified SYNGENTA that SYNGENTA should
seek to obtain the GOVERNMENT APPROVAL for the Cry1Ab GENE and Cry1Ab GENE
EVENTS in a particular country outside the United States of America, and
D&PL later revokes such notice after SYNGENTA has commenced performance and
has made regulatory filings in that country, in the event that D&PL obtains
GOVERNMENT APPROVAL in that country within eighteen (18) months after the
date on which D&PL gave such notice to SYNGENTA, D&PL shall pay to SYNGENTA
the milestone payment of ****** for each such country, payable not later
than ninety (90) days after such GOVERNMENT APPROVAL has been obtained by
or on behalf of D&PL. It is understood by the PARTIES that D&PL shall be
obligated to pay SYNGENTA only one such milestone payment per country,
regardless of the number of GENES or GENE events as to which GOVERNMENT
APPROVALS in such country are obtained under this LICENSE AGREEMENT and/or
any of the RELATED AGREEMENT(S).
(g) D&PL may, at its expense, perform the regulatory and
registration activities required to obtain and maintain GOVERNMENT APPROVAL
of the Cry1Ab GENE and Cry1Ab GENE EVENTS in any country outside the United
States of America, in which D&PL has not designated by notice to SYNGENTA
for SYNGENTA to seek GOVERNMENT APPROVAL (or with respect to which D&PL has
revoked a notice previously given under Subsection 4.3(d)), in which event
Subsection 4.3(f) shall not apply with respect to the Cry1Ab GENE or Cry1Ab
GENE EVENT(S) as to which D&PL obtains and maintains such GOVERNMENT
APPROVAL except as expressly set forth therein in the case where D&PL has
revoked a notice previously given to SYNGENTA to obtain such GOVERNMENT
APPROVAL. In such countries, SYNGENTA shall provide reasonable assistance
to D&PL with respect to import, movement and release approvals and
clearances at D&PL's expense. Subject to Subsections 5.3 and 5.4, D&PL
shall have a right to obtain from SYNGENTA and use for the purpose of
obtaining and maintaining GOVERNMENT APPROVALS, as provided for in this
LICENSE AGREEMENT, any relevant plant materials, purified Cry1Ab proteins
and all regulatory applications, regulatory data and other data and
information, owned or developed by SYNGENTA prior to the EFFECTIVE DATE or
during the term of this LICENSE AGREEMENT for registration of the Cry1Ab
GENE or Cry1Ab GENE EVENTS with respect to which D&PL has rights in cotton.
D&PL at its expense shall obtain and maintain all permits, registrations,
clearances or other government or regulatory approvals required under all
applicable laws relating to seed varieties required for the testing,
development, production and sale of LICENSED COMMERCIAL SEED of DELTAPINE
Cry1Ab CULTIVARS and/or SUBLICENSEE Cry1Ab CULTIVARS.
(h) D&PL's obligations to reimburse SYNGENTA for expenses of
obtaining and maintaining GOVERNMENT APPROVALS outside the United States of
America as provided in this Section 4.3 shall be limited to application and
maintenance fees and similar administrative, regulatory or statutory fees
or taxes payable to government regulatory agencies, incremental regulatory
expenses incurred by or on behalf of SYNGENTA, and expenses for
post-registration maintenance activities included but not limited to
stewardship and insect resistance management activities (including
personnel costs at the then current FTE RATE, and third party out of pocket
expenses) specifically related to obtaining and maintaining such GOVERNMENT
APPROVALS in such countries but shall not include reimbursement by D&PL of
any of SYNGENTA'S general administrative or overhead expenses or of any
expenses of activities required in any event for SYNGENTA to obtain and
maintain, at its sole expense during such period, GOVERNMENT APPROVALS in
the United States of America. There shall be no duplication of
reimbursement of costs and expenses under this LICENSE AGREEMENT and under
the RELATED AGREEMENT(S). D&PL and SYNGENTA must agree in advance on a
budget for any activities and expenses for which SYNGENTA may request
reimbursement from D&PL under this LICENSE AGREEMENT, including, but not
limited to, activities (i) to obtain or maintain GOVERNMENT APPROVALS in
countries outside the United States of America, (ii) to obtain or maintain
GOVERNMENT APPROVALS in the United States of America after six and one half
(6.5) years from the EFFECTIVE DATE, (iii) to assist D&PL with obtaining
and maintaining GOVERNMENT APPROVALS, and (iv) to assist D&PL with
obtaining GOVERNMENT APPROVALS for COMBINED GENE COTTON SEED where SYNGENTA
is entitled to request reimbursement under Subsection 3.6(a). If after good
faith negotiations SYNGENTA and D&PL do not, within one hundred twenty
(120) days, agree upon a commercially reasonable budget for any specific
activities requested by D&PL to be performed by SYNGENTA under Section
4.3(h), Subparts (i) through (iv), SYNGENTA shall not, on that occasion, be
required to perform such specific activities requested by D&PL. SYNGENTA
shall invoice D&PL quarterly, not later than thirty (30) days after the end
of each calendar quarter, for all personnel costs or out-of-pocket expenses
for which SYNGENTA is entitled to reimbursement under this LICENSE
AGREEMENT during the preceding quarter. The invoice shall itemize the
services and expenses for which reimbursement is sought. Payment of amounts
due under such invoices shall be due thirty (30) days after receipt by
D&PL. For a period of seven (7) years, SYNGENTA shall keep records
supporting the amounts invoiced to D&PL and shall permit its books and
records to be examined on a confidential basis from time to time by a
national auditing firm, reasonably acceptable to SYNGENTA, appointed by and
at the expense of D&PL, to the extent necessary to verify amounts invoiced.
(i) Neither D&PL nor SYNGENTA (if otherwise permitted to do so
under this LICENSE AGREEMENT) shall commence COMMERCIAL SALE (nor authorize
any other party to commence COMMERCIAL SALE) in any particular country in
THE TERRITORY of LICENSED COMMERCIAL SEED containing a particular Cry1Ab
GENE EVENT with respect to which D&PL has rights in cotton, prior to the
later of (i) the DATE OF GOVERNMENT APPROVAL or (ii) DATE OF APPROVAL FOR
COMMERCIAL SALE of that Cry1Ab GENE EVENT in the subject country, provided
that (ii) shall not apply if D&PL has notified or is deemed to have
notified SYNGENTA that it or its sublicensees will not commercialize
LICENSED COMMERCIAL SEED containing the Cry1Ab GENE as provided in
Subsection 4.3(k).
(j) All government approvals and any import, movement and release
approvals and permits for the Cry1Ab GENE and Cry1Ab GENE EVENTS obtained
by SYNGENTA shall be owned and held in the name of SYNGENTA or its
AFFILIATES unless otherwise required by applicable law in the subject
country, provided that D&PL shall have the right to use the same with
respect to import, export, production, use and sale of LICENSED COMMERCIAL
SEED under this LICENSE AGREEMENT. All government approvals and any import,
movement, and release approvals and permits for the Cry1Ab GENE and the
Cry1Ab GENE EVENTS obtained by D&PL pursuant to Subsection 4.3(g) shall be
owned and held in the name of D&PL or its AFFILIATES unless otherwise
required by the applicable law of the subject country, provided that
SYNGENTA and its licensees shall have the right to use the same with
respect to import, export, production, use and sale of cottonseed
containing the Cry1Ab GENE when SYNGENTA and/or its licensees are permitted
to engage in such activities under Subsection 3.5 of this LICENSE
AGREEMENT. D&PL shall not assign or transfer and shall not permit a third
party who may hold the governmental approvals in its name (if so required
by applicable law) to assign or transfer such government approvals, except
that D&PL may assign such government approvals under the same circumstances
under which D&PL may assign this LICENSE AGREEMENT and its rights and
obligations under Section 14.1(a). Upon termination of the LICENSE
AGREEMENT, at SYNGENTA'S request and subject to SYNGENTA'S payment to D&PL
of ****** , D&PL shall assign and transfer and shall cause any third party
as applicable to assign or transfer to SYNGENTA, to the extent permitted
under applicable law, all government approvals for the Cry1Ab GENE and the
Cry1Ab GENE EVENTS obtained by D&PL pursuant to Subsection 4.3(g) and shall
return all data and other information provided by SYNGENTA to D&PL under
Subsection 4.3(g)
(k) In the event that D&PL gives notice to SYNGENTA that D&PL or
its sublicensees will not commercialize LICENSED COMMERCIAL SEED containing
the Cry1Ab GENE in a particular country outside the United States of
America, SYNGENTA shall have the right to commercialize the Cry1Ab GENE in
that country in any cotton cultivars selected by SYNGENTA (other than in
DELTAPINE Cry1Ab CULTIVARS or in SUBLICENSEE Cry1Ab CULTIVARS, unless such
cultivars are licensed by D&PL to SYNGENTA for such purpose), including the
right to test, develop, produce, have produced, multiply and sell cotton
seed containing the Cry1Ab GENE, alone or in combination with other
GENE(S), and to grant licenses under the LICENSED PATENT RIGHTS and
SYNGENTA TECHNOLOGY to any third party to develop, produce, have produced,
multiply, and sell cottonseed containing the Cry1Ab GENE in their
germplasm. If SYNGENTA elects to exercise this right, it shall promptly
notify D&PL, in which event SYNGENTA may assume responsibility, at its
expense, for regulatory and commercialization activities for that Cry1Ab
GENE and Cry1Ab GENE EVENT in such country. After recovery by SYNGENTA of
its regulatory and other expenses necessary for GOVERNMENT APPROVAL and
introduction of the Cry1Ab GENE and Cry1Ab GENE EVENT into such country,
and after deduction of any TECHNOLOGY FEES or other amounts due to or
retained by SYNGENTA'S third party seed company licensees D&PL shall
receive seventy percent (70%) of the net NET TECHNOLOGY FEE REVENUE and
SYNGENTA shall receive thirty percent (30%) of the net NET TECHNOLOGY FEE
REVENUE in that country; provided that if an event under Subsection
3.5(c)(ii) shall have occurred, then the sharing and allocation of NET
TECHNOLOGY FEE REVENUE shall be governed by the provisions of Subsection
3.5(c)(ii). D&PL agrees that not later than two (2) years after GOVERNMENT
APPROVAL of the Cry1Ab GENE has been obtained in the United States of
America, D&PL shall with respect to each of the following countries:
Australia, Brazil, India and the People's Republic of China, either (i)
request that SYNGENTA obtain GOVERNMENT APPROVAL or (ii) notify SYNGENTA
that D&PL will obtain GOVERNMENT APPROVAL and then proceed with
commercially reasonable efforts to obtain GOVERNMENT APPROVAL. If D&PL does
not take one of the actions set forth in the preceding sentence with
respect to any one or more of such named countries, then with respect to
that country(ies), D&PL shall be deemed to have notified SYNGENTA that it
will not commercialize LICENSED COMMERCIAL SEED with the Cry1Ab GENE in
that country and the provisions of this Subsection 4.3(k) shall apply to
such country.
4.4 SEED DEVELOPMENT AND COMMERCIALIZATION RESPONSIBILITIES. SYNGENTA
shall deliver to D&PL (in viable cotton seed) each Cry1Ab GENE EVENT
developed by SYNGENTA before or during the term of this LICENSE AGREEMENT
that SYNGENTA determines is a potential candidate for COMMERCIAL
DEVELOPMENT. SYNGENTA'S obligation under the preceding sentence shall
terminate upon occurrence of an event described in Subsection 3.5(c)(ii),
Subparts (A), (B) and/or (C), and/or upon the occurrence of an event
described in Subsection 3.5(c)(ii), Subpart (E), if D&PL gives SYNGENTA the
notice described in the third sentence of Subsection 10.2(d), and/or upon
termination of this LICENSE AGREEMENT pursuant to Subsection
14.2(b)(ii)(B). D&PL shall be responsible for the commercialization of
LICENSED COMMERCIAL SEED of DELTAPINE Cry1Ab CULTIVARS and SUBLICENSEE
Cry1Ab CULTIVARS. In furtherance of the development and commercialization
of such LICENSED COMMERCIAL SEED by D&PL and its permitted sublicensees:
(a) D&PL shall determine, in its judgment reasonably exercised in
good faith, the following provisions of the COMMERCIAL DEVELOPMENT PLAN
pertaining to development and commercialization of Cry1Ab GENE EVENTS and
LICENSED COMMERCIAL SEED:
(i) The criteria for COMMERCIAL INSECT RESISTANCE for Cry1Ab
GENE EVENTS;
(ii) Criteria for selection of Cry1Ab GENE EVENTS for
COMMERCIAL DEVELOPMENT;
(iii) GENE EQUIVALENCY STANDARDS;
(iv) Modifications, if necessary, to the procedure for
determining satisfaction of AGRONOMIC CRITERIA (set forth in Exhibit
D); and
(v) Modifications, if necessary, to SEED PURITY STANDARDS
(set forth in Exhibit E).
D&PL shall give notice to the LICENSE MANAGEMENT COMMITTEE of its
determination of foregoing provisions of the COMMERCIAL DEVELOPMENT PLAN,
together with a written statement of the basis for D&PL'S determination
and, where appropriate, supporting documents. Upon request from SYNGENTA,
and subject to any obligations of confidentiality to which D&PL is subject
in agreements with third parties that are in effect on the EFFECTIVE DATE
and provided that D&PL shall not be required to waive attorney client
privilege, representatives of D&PL shall discuss D&PL's determinations
under Section 4.4(a) with the members of the LICENSE MANAGEMENT COMMITTEE.
(b) D&PL shall determine, in its judgment reasonably exercised in
good faith, and consistent with the COMMERCIAL DEVELOPMENT PLAN:
(i) Whether particular Cry1Ab GENE EVENTS have exhibited the
criteria for COMMERCIAL INSECT RESISTANCE;
(ii) Which particular Cry1Ab GENE EVENTS shall be subject to
COMMERCIAL DEVELOPMENT;
(iii) Whether particular DELTAPINE Cry1Ab CULTIVARS and
SUBLICENSEE Cry1Ab CULTIVARS meet the AGRONOMIC CRITERIA, GENE
EQUIVALENCY STANDARDS and SEED PURITY STANDARDS; and
(iv) Which particular DELTAPINE Cry1Ab CULTIVARS and
SUBLICENSEE Cry1Ab CULTIVARS that meet the foregoing standards shall
be commercialized in particular countries.
D&PL shall give notice to the LICENSE MANAGEMENT COMMITTEE of its
determinations with respect to the foregoing, together with a written
statement of the basis for D&PL'S determination and, where appropriate,
supporting documents. Upon request from SYNGENTA, and subject to
obligations of confidentiality to which D&PL is subject in agreements with
third parties that are in effect on the EFFECTIVE DATE and provided that
D&PL shall not be required to waive attorney client privilege,
representatives of D&PL shall discuss D&PL's determinations under Section
4.4(b) with the members of the LICENSE MANAGEMENT COMMITTEE.
(c) D&PL shall make recommendations to the LICENSE MANAGEMENT
COMMITTEE on the following matters:
(i) The mode of collection of TECHNOLOGY FEES with respect
to sales of LICENSED COMMERCIAL SEED in any particular country or
geographical region, as provided for in Subsection 6.1(a);
(ii) The terms and conditions of any form of sublicense
agreements to be executed by LICENSED GROWERS or the wording of
container labels or sales documents used in lieu of or in addition to
the execution of grower license agreements, as provided for in
Subsection 3.1 and Subsection 3.7(e);
(iii) The strategy, format, and content of promotion and
incentive programs relating to the use of Cry1Ab GENES to LICENSED
COMMERCIAL SEED, including items which may be deducted from TECHNOLOGY
FEES in determining NET TECHNOLOGY FEE REVENUE, as provided in
Subsection 2.1.54;
(iv) The dates by which D&PL shall make recommendations
concerning appropriate TECHNOLOGY FEES in each PRICING REGION as
provided for in Subsection 6.1(d)(i);
(v) The content, scope, limitation and/or necessary
conditions of performance warranties which may be made by the PARTIES
concerning the Cry1Ab GENE and/or LICENSED COMMERCIAL SEED as provided
in Section 13.
D&PL shall give SYNGENTA not less than six (6) months advance
notice of the date(s) by which D&PL will next make a recommendation on
matters described in Subsections 4.4(c)(i), 4.4(c)(ii) and/or 4.4(c)(iii).
The LICENSE MANAGEMENT COMMITTEE shall make a determination on each of the
matters described in Subsection 4.4(c) in accordance with the provisions in
Subsection 4.5(d).
4.5 LICENSE MANAGEMENT COMMITTEE.
(a) Formation of LICENSE MANAGEMENT COMMITTEE. SYNGENTA and D&PL
hereby agree to form the LICENSE MANAGEMENT COMMITTEE, to be comprised of
four (4) members, with two (2) members to be appointed by each of SYNGENTA
and D&PL. The LICENSE MANAGEMENT COMMITTEE will be chaired on a rotating
annual basis by a SYNGENTA member or a D&PL member designated by SYNGENTA
or D&PL as the case may be. The LICENSE MANAGEMENT COMMITTEE shall be
responsible for adopting, revising and amending (as necessary) and
overseeing the COMMERCIAL DEVELOPMENT PLAN for the Cry1Ab GENE and other
matters expressly delegated to the LICENSE MANAGEMENT COMMITTEE under this
LICENSE AGREEMENT.
(b) Meetings. The LICENSE MANAGEMENT COMMITTEE shall meet at
least quarterly, alternating between the United States corporate offices of
SYNGENTA and D&PL or at such other sites as the LICENSE MANAGEMENT
COMMITTEE may agree upon. The first such meeting shall be held at the
United States corporate offices of SYNGENTA within thirty (30) days after
the EFFECTIVE DATE. Participation in any meeting of the LICENSE MANAGEMENT
COMMITTEE may be in person, by telephone, by video conference or by other
means of telecommunication that enables all members of the LICENSE
MANAGEMENT COMMITTEE participating in the meeting to communicate
simultaneously with each other. If personal participation in a meeting by a
member of the LICENSE MANAGEMENT COMMITTEE is not practical, that member
may, by written notice to each of the other members of the LICENSE
MANAGEMENT COMMITTEE, designate a proxy with voting authority. In addition,
the LICENSE MANAGEMENT COMMITTEE may act without a formal meeting by a
written consent signed, in original or counterparts, by all the members of
the LICENSE MANAGEMENT COMMITTEE. Subject to the obligations set forth in
Article 8, representatives of either PARTY, in addition to the members of
the LICENSE MANAGEMENT COMMITTEE, may attend LICENSE MANAGEMENT COMMITTEE
meetings as nonvoting observers at the invitation of either PARTY.
(c) Minutes. LICENSE MANAGEMENT COMMITTEE shall keep accurate
minutes of its meetings and record all decisions and all actions
recommended or taken. Draft minutes shall be delivered to the members of
the LICENSE MANAGEMENT COMMITTEE within twenty (20) days after each
meeting. The members of the LICENSE MANAGEMENT COMMITTEE shall elect or
appoint a secretary for each meeting and such secretary shall be
responsible for the preparation and circulation of the draft minutes. Draft
minutes shall be edited by the members of the LICENSE MANAGEMENT COMMITTEE
and shall be issued in final form only with their approval and agreement as
evidenced by their signatures on the minutes. Minutes of LICENSE MANAGEMENT
COMMITTEE meetings shall be Confidential Information.
(d) Decision Making.
(i) At each LICENSE MANAGEMENT COMMITTEE meeting, at least
one (1) member appointed by each of SYNGENTA and D&PL shall constitute a
quorum. Decisions shall be made by unanimous vote, with all the members
representing SYNGENTA collectively having one vote and the members
representing D&PL collectively having one vote.
(ii) As to each matter coming before the LICENSE MANAGEMENT
COMMITTEE one PARTY (the "RESPONSIBLE PARTY") shall be responsible for
making a recommendation for action or decision. The designation of the
RESPONSIBLE PARTY is based on its primary areas of responsibility under
this LICENSE AGREEMENT, provided that:
(A) SYNGENTA shall be the RESPONSIBLE PARTY having
primary responsibility for making recommendations to
the LICENSE MANAGEMENT COMMITTEE relating to activities
and decisions with respect to further development of
the Cry1Ab GENE and Cry1Ab GENE EVENTS and technical
support for development and commercialization
activities, as described in Subsection 4.3(b).
(B) SYNGENTA shall be the RESPONSIBLE PARTY having
primary responsibility for making recommendations to
the LICENSE MANAGEMENT COMMITTEE with respect to
activities and decisions relating to obtaining and
maintaining GOVERNMENT APPROVAL of Cry1Ab GENE EVENTS
designated by D&PL in the United States of America and
other countries designated by D&PL as countries in
which SYNGENTA is to seek government approval and D&PL
shall be the RESPONSIBLE PARTY having primary
responsibility for making recommendations to the
LICENSE MANAGEMENT COMMITTEE with respect to activities
and decisions relating to obtaining and maintaining
GOVERNMENT APPROVAL in other countries.
(C) D&PL shall be the RESPONSIBLE PARTY having
primary responsibility for making recommendations to
the LICENSE MANAGEMENT COMMITTEE relating to
commercialization of LICENSED COMMERCIAL SEED on
matters described in Subsections 4.4(c)(i) to (v).
(D) D&PL shall be the RESPONSIBLE PARTY having
primary responsibility for making recommendations to
the LICENSE MANAGEMENT COMMITTEE for activities
relating to product performance including the content
of product performance claims and advertising and the
handling of product performance claims under Section
13.
(iii) In any case where a PARTY is required or permitted
under this LICENSE AGREEMENT to make a recommendation to the LICENSE
MANAGEMENT COMMITTEE, that PARTY will provide with its recommendation to
the LICENSE MANAGEMENT COMMITTEE documentation supporting such
recommendation reasonably sufficient for the other PARTY and the LICENSE
MANAGEMENT COMMITTEE to be able to assess and understand the basis for the
recommendation. In the event SYNGENTA disagrees with any recommendation
made by D&PL as the RESPONSIBLE PARTY under Subsections 4.4(c)(i),
4.4(c)(ii) and/or 4.4(c)(iii), SYNGENTA shall within ten (10) business days
after receipt of D&PL'S recommendation give written notice to D&PL and the
LICENSE MANAGEMENT COMMITTEE of its disagreement with D&PL's
recommendation, and any alternative recommendation, and documentation
supporting such disagreement with D&PL'S recommendation and SYNGENTA'S
alternative recommendation reasonably sufficient for D&PL and the LICENSE
MANAGEMENT COMMITTEE to be able to assess and understand the basis for
SYNGENTA'S disagreement and its alternative recommendation. The PARTY
making any recommendation or response and counter-recommendation under this
Subsection 4.4(d)(iii) shall not be required to provide information to the
extent that to do so would breach such PARTY'S written contractual
obligations to any third party or waive attorney client privilege.
(iv) The LICENSE MANAGEMENT COMMITTEE shall not unreasonably
withhold or delay approval of a recommendation from the RESPONSIBLE PARTY
on matters within its areas of primary responsibility. Whether a decision
of the LICENSE MANAGEMENT COMMITTEE on a recommendation from a RESPONSIBLE
PARTY is consistent with the preceding sentence shall be subject to the
dispute resolution provisions of Subsection 4.5(d)(v) and, as appropriate,
to arbitration under Subsection 14.12 except as to any recommendation and
alternative recommendation made with respect to Subsections 4.4(c)(i),
4.4(c)(ii) and/or 4.4(c)(iii), as to which the procedures set forth in
Subsection 4.5(d)(vi) shall apply with respect to arbitration before the
SPECIAL TECHNOLOGY FEE PANEL selected, empanelled and reimbursed as
provided in Subsection 6.1(d)(iv).
(v) If the LICENSE MANAGEMENT COMMITTEE is unable to reach
unanimous agreement on any matter (a "DEADLOCK MATTER"), upon written
notice by any one or more members of the LICENSE MANAGEMENT COMMITTEE, the
DEADLOCK MATTER shall be referred for resolution to an Executive Management
Committee consisting of a member of senior management of SYNGENTA as
designated by SYNGENTA and a member of the senior management of D&PL as
designated by D&PL (the "EXECUTIVE MANAGEMENT COMMITTEE"). The LICENSE
MANAGEMENT COMMITTEE shall endeavor to adopt a resolution referring the
DEADLOCK MATTER setting forth the specifics of the issues to be resolved,
which resolution, together with information and documentation relevant to
the DEADLOCK MATTER, shall be forwarded to the members of the EXECUTIVE
MANAGEMENT COMMITTEE; provided, however, that failure of the LICENSE
MANAGEMENT COMMITTEE to agree upon the form of such resolution or
assembling of documentation shall not delay the referral of the DEADLOCK
MATTER to the EXECUTIVE MANAGEMENT COMMITTEE. Upon receipt of notice of a
DEADLOCK MATTER, the EXECUTIVE MANAGEMENT COMMITTEE shall meet promptly in
person, or by telephone, video conference or other means of
telecommunication and endeavor to reach agreement. Decisions of the
EXECUTIVE MANAGEMENT COMMITTEE shall be by unanimous vote and shall be
binding on the PARTIES and the members of the LICENSE MANAGEMENT COMMITTEE.
If the EXECUTIVE MANAGEMENT COMMITTEE is unable to unanimously resolve the
DEADLOCK MATTER within thirty (30) days from the date of the deadlock
necessitating referral to the EXECUTIVE MANAGEMENT COMMITTEE, such dispute
may be submitted by either PARTY to arbitration pursuant to Subsection
14.12, provided that in the event the DEADLOCK MATTER is a recommendation
made by D&PL as the RESPONSIBLE PARTY under Subsections 4.4(c)(i),
4.4(c)(ii) and/or 4.4(c)(iii), such dispute, if submitted to arbitration by
either PARTY, shall be submitted to arbitration before the SPECIAL
TECHNOLOGY FEE PANEL for resolution in accordance with the procedure set
forth in Subsection 4.5(d)(vi).
(vi) Within ten (10) business days after either PARTY gives
notice of submission to the SPECIAL TECHNOLOGY FEE PANEL of a DEADLOCK
MATTER on a recommendation made by D&PL as the RESPONSIBLE PARTY under
Subsections 4.4(c)(i), 4.4(c)(ii) and/or 4.4(c)(iii), (A) D&PL shall submit
to SYNGENTA and to each of the members of the SPECIAL TECHNOLOGY FEE PANEL
a written statement setting forth why the subject recommendation made by
D&PL is consistent with the "Purpose" (the "Purpose" shall mean maximizing
the NET TECHNOLOGY REVENUE to the PARTIES under this LICENSE AGREEMENT
and/or any other goals to be served by the recommendation under this
LICENSE AGREEMENT which have been agreed by the PARTIES in advance) (and is
more consistent with that Purpose than the alternative recommendation by
SYNGENTA to the LICENSE MANAGEMENT COMMITTEE) and (B) SYNGENTA shall submit
to D&PL and to each of the members of the SPECIAL TECHNOLOGY FEE PANEL a
written statement setting forth why the subject recommendation made by D&PL
is not consistent with the Purpose and/or why the alternative
recommendation made by SYNGENTA to the LICENSE MANAGEMENT COMMITTEE is more
consistent with the Purpose than the recommendation by D&PL. Within five
(5) business days after submission of the foregoing statements, SYNGENTA
and D&PL may submit to the other PARTY and to each of the members of the
SPECIAL TECHNOLOGY FEE PANEL further written statements supplementing their
initial statements. The PARTIES' written statements may be accompanied by
any supporting documents the submitting PARTY deems relevant. Within twenty
(20) business days after the date of transmission of the notice under
Subsection 4.5(d)(v), the SPECIAL TECHNOLOGY FEE PANEL shall meet, in
person or by means of telecommunications, and shall decide, by majority
vote, whether D&PL'S subject recommendation is more consistent with the
Purpose than SYNGENTA'S alternative recommendation. In the event that the
SPECIAL TECHNOLOGY FEE PANEL finds D&PL'S recommendation to be more
consistent with the Purpose than SYNGENTA'S alternative recommendation,
then D&PL'S recommendation shall be followed by the PARTIES for the period
for which such recommendation was to be effective, unless the PARTIES
otherwise mutually agree. In the event that the SPECIAL TECHNOLOGY FEE
PANEL finds that SYNGENTA'S alternative recommendation to be more
consistent with the Purpose than D&PL'S recommendation, then SYNGENTA'S
alternative recommendation shall be followed by the PARTIES for the period
for which such recommendation was to be effective, unless the PARTIES
otherwise mutually agree. The SPECIAL TECHNOLOGY FEE PANEL shall make its
decision based on the PARTIES' written submissions. No personal appearances
or other communications with the members of the SPECIAL TECHNOLOGY FEE
PANEL shall be permitted. The SPECIAL TECHNOLOGY FEE PANEL shall notify
SYNGENTA and D&PL in writing of their decision. The decision of the SPECIAL
TECHNOLOGY FEE PANEL shall be final and binding on SYNGENTA and D&PL.
SECTION 5 -- OWNERSHIP OF TECHNOLOGY
5.1 SYNGENTA TECHNOLOGY AND LICENSED PATENT RIGHTS.
(a) All SYNGENTA TECHNOLOGY shall remain the property of
SYNGENTA, including all improvements thereto discovered and reduced to
practice by SYNGENTA or by D&PL in the course of performance of activities
pursuant to this LICENSE AGREEMENT, provided that SYNGENTA hereby grants
D&PL licenses to any such improvements without payment of additional
consideration and otherwise on the same terms as the LICENSES granted
herein (unless any SYNGENTA TECHNOLOGY is in-licensed by SYNGENTA from any
third party, and the license with such third party contains contrary terms
with respect to improvements).
(b) Each of the LICENSED PATENT RIGHTS shall remain the property
of the owner thereof as of the EFFECTIVE DATE or as of the date on which
such patent rights are added to the LICENSED PATENT RIGHTS.
5.2 D&PL TECHNOLOGY. All D&PL TECHNOLOGY shall remain the property of
D&PL including all improvements thereto discovered and reduced to practice
by SYNGENTA or by D&PL in the course of performance of activities pursuant
to this LICENSE AGREEMENT (unless any D&PL TECHNOLOGY is in-licensed by
D&PL from any third party, in which case D&PL will decide ownership in
reference to the license terms with such third party).
5.3 SAFETY, TOXICOLOGY AND EFFICACY DATA. SYNGENTA shall own all data
that relates solely to the safety, toxicology, efficacy, and performance of
the GENE including the protein product and which does not relate to D&PL
CULTIVARS or to a NON-SYNGENTA GENE. D&PL shall own all data that relates
to the agronomic performance and fiber properties of D&PL CULTIVARS and/or
NON-SYNGENTA GENE(S) and which does not relate to SYNGENTA GENE(S).
SYNGENTA and D&PL shall jointly own all other safety, toxicological, and
efficacy data generated jointly through activities undertaken pursuant to
the COMMERCIAL DEVELOPMENT PLAN; provided that neither D&PL nor SYNGENTA
shall grant any rights of access or use of such jointly owned data to any
third party to obtain GOVERNMENT APPROVALS or clearances, unless expressly
agreed by the other PARTY or as expressly permitted under this LICENSE
AGREEMENT. The provisions of this LICENSE AGREEMENT shall not affect the
rights of any third parties supplying NON-SYNGENTA GENE(S) to access or
ownership of any safety, toxicological, and efficacy data relating to
NON-SYNGENTA GENE(S) or COMBINED GENE COTTON SEED containing NON-SYNGENTA
GENE(S) supplied by such third party.
5.4 USE OF DATA. SYNGENTA and D&PL shall have a royalty-free license
to use data owned by the other PARTY developed by activities undertaken
pursuant to this LICENSE AGREEMENT for the purposes set forth in this
LICENSE AGREEMENT. Subject to obligations of confidentiality and non-use in
agreements with third parties, such data shall be delivered to the other
PARTY upon request, which delivery will not be unreasonably delayed.
SECTION 6 -- TECHNOLOGY FEES AND ROYALTY
6.1 TECHNOLOGY FEE. The TECHNOLOGY FEE shall be set based on the
principles for establishing TECHNOLOGY FEES set forth in Section 6.1(C)
through the procedure for establishing TECHNOLOGY FEES set forth in Section
6.1(d) (except as otherwise expressly provided in this LICENSE AGREEMENT).
(a) Collection of TECHNOLOGY FEES. The TECHNOLOGY FEE may be
either (i) a grower license fee charged directly to LICENSED GROWERS for a
limited use sublicense under the LICENSED PATENTS, the purchase of which is
required prior to the time of purchasing LICENSED COMMERCIAL SEED, or (ii)
an amount allocated to the sublicense under the LICENSED PATENTS included
in the sales price of LICENSED COMMERCIAL SEED or (iii) other forms of
value capture. The mode of collection of the TECHNOLOGY FEE with respect to
LICENSED COMMERCIAL SEED of DELTAPINE Cry1Ab CULTIVARS or SUBLICENSEE
Cry1Ab CULTIVARS in any particular country or geographical region at any
time will be determined in accordance with Section 4 based upon the market
conditions and the mode of sale of other cotton seed products and related
technology in that market. [Text in Item 8 of Exhibit K].
(b) Basis of Calculation of TECHNOLOGY FEES. Regardless of the
form in which the TECHNOLOGY FEE is charged, the TECHNOLOGY FEE will be
calculated based on the quantity of LICENSED COMMERCIAL SEED sold. In the
United States, the TECHNOLOGY FEE will be established for each PRICING
REGION, and, if charged on a per acre basis, the TECHNOLOGY FEE shall be
converted from a fee per acre to a fee per UNIT of seed of the particular
LICENSED COMMERCIAL SEED taking into consideration the applicable SEED DROP
RATE. Establishment of appropriate mechanisms for application of the
TECHNOLOGY FEES to LICENSED COMMERCIAL SEED sold in countries outside of
the United States will be determined in accordance with Section 4.
(c) [Text in Exhibit J]
(d) Procedure For Establishing TECHNOLOGY FEES. The TECHNOLOGY
FEE for use of the Cry1Ab GENE embodied in LICENSED COMMERCIAL SEED sold by
D&PL for each PRICING REGION shall be set annually utilizing the following
procedure [Text in Item 9 of Exhibit K]:
(i) D&PL shall make recommendations annually concerning the
appropriate TECHNOLOGY FEE in each PRICING REGION. D&PL shall also make
recommendations on COMPETITIVE TECHNOLOGY FEE ADJUSTMENTS that D&PL, in its
discretion, can provide as discounts from the TECHNOLOGY FEES as approved
by SYNGENTA to meet competitive conditions in the marketplace in the
particular PRICING REGION. For the United States of America, D&PL'S
recommendations shall be made not later than September 15 of the calendar
year before the commencement of the cotton planting season in which the
TECHNOLOGY FEE and COMPETITIVE TECHNOLOGY FEE ADJUSTMENTS will be in
effect. For other countries, D&PL will establish by notice to SYNGENTA a
date by which D&PL'S recommendations shall be made prior the commencement
of the marketing season in which the TECHNOLOGY FEE and COMPETITIVE
TECHNOLOGY FEE ADJUSTMENTS will be in effect, which date shall be not less
than six (6) months before the commencement of the cotton planting season
in such country. D&PL will provide SYNGENTA with documentation supporting
such recommendation sufficient for SYNGENTA to be able to assess and
understand the basis for D&PL'S recommendation and its conformity with the
principles for establishing TECHNOLOGY FEES set forth in Subsection 6.1(c).
Such documentation shall include factual support and specific information
to the extent reasonably available, provided that D&PL shall not be
required to provide information to the extent that to do so would breach
D&PL'S written contractual obligations to any third party.
(ii) Within ten (10) business days after receipt of D&PL
recommendations, SYNGENTA shall give D&PL written notice of the TECHNOLOGY
FEE and COMPETITIVE TECHNOLOGY FEE ADJUSTMENTS for each of the subject
PRICING REGIONS for the forthcoming marketing season.
(iii) In the event that SYNGENTA'S notice of TECHNOLOGY FEES
and COMPETITIVE TECHNOLOGY FEE ADJUSTMENTS for any of the subject PRICING
REGIONS is different from D&PL'S recommendation with respect thereto, D&PL
may within ten (10) business days after receipt of SYNGENTA'S notice under
Subsection 6.1(d)(ii) give notice to SYNGENTA of submission of the
TECHNOLOGY FEE or COMPETITIVE TECHNOLOGY FEE ADJUSTMENTS for such PRICING
REGION to binding arbitration to as provided in Subsections 6.1(d)(iv)
through 6.1(d)(vi).
(iv) Arbitration concerning TECHNOLOGY FEES and COMPETITIVE
TECHNOLOGY FEE ADJUSTMENTS shall be conducted before a special panel of
three (3) arbitrators each of whom shall be a person with expertise and
experience in the field of agribusiness and who has no current or previous
employment nor any current ownership interest in SYNGENTA or D&PL (the
"SPECIAL TECHNOLOGY FEE PANEL"), provided that either PARTY may request a
waiver of the disqualification of any member or proposed member of the
SPECIAL TECHNOLOGY PANEL on account of a current non-material ownership
interest in a PARTY, which request for waiver shall not be unreasonably
denied or delayed. The members of the SPECIAL TECHNOLOGY FEE PANEL shall be
selected by mutual agreement between SYNGENTA and D&PL within ninety (90)
days after execution of this LICENSE AGREEMENT. In the event that SYNGENTA
and D&PL do not mutually agree on the members of the SPECIAL TECHNOLOGY FEE
PANEL within ninety (90) days after execution of this LICENSE AGREEMENT,
then within one hundred twenty (120) days after execution of this LICENSE
AGREEMENT, SYNGENTA and D&PL shall each select one member of the SPECIAL
TECHNOLOGY FEE PANEL and the two members thus selected shall select the
third member. In the event of the death, disability or resignation of a
member of the SPECIAL TECHNOLOGY FEE PANEL, if the subject member was
appointed by SYNGENTA or D&PL, the resulting vacancy shall be filled by the
appointing PARTY or, if the subject member was appointed by mutual
agreement of SYNGENTA or D&PL, the resulting vacancy shall be filled by
mutual agreement of SYNGENTA or D&PL, provide further that if SYNGENTA and
D&PL do not fill such vacancy by mutual agreement within ten (10) business
days after such a vacancy occurs or, in any event, if the member to be
replaced was selected by the two members selected respectively by SYNGENTA
and D&PL, the vacancy shall be filled by the two remaining members. Members
of the SPECIAL TECHNOLOGY FEE PANEL shall receive reimbursement for the
reasonable value of their service on the SPECIAL TECHNOLOGY FEE PANEL and
their reasonable out of pocket expenses connected therewith. Such amounts
shall be paid one-half by SYNGENTA and one-half by D&PL.
(v) Within ten (10) business days after D&PL gives a notice
to SYNGENTA under Subsection 6.1(d)(iii), (A) SYNGENTA shall submit to D&PL
and to each of the members of the SPECIAL TECHNOLOGY FEE PANEL a written
statement setting forth why each of the TECHNOLOGY FEES and/or COMPETITIVE
TECHNOLOGY FEE ADJUSTMENTS in SYNGENTA'S notice under Subsection 6.1(d)(ii)
that has been submitted to arbitration is more consistent with the
principles for establishing TECHNOLOGY FEES set forth in Subsection 6.1(c)
than was D&PL recommendation with respect thereto and (B) D&PL shall submit
to SYNGENTA and to each of the members of the SPECIAL TECHNOLOGY FEE PANEL
a written statement setting forth why D&PL'S recommendation as to each of
the TECHNOLOGY FEES and/or COMPETITIVE TECHNOLOGY FEE ADJUSTMENTS in
SYNGENTA'S notice under Subsection 6.1(d)(ii) that is submitted to
arbitration is more consistent with the principles for establishing
TECHNOLOGY FEES set forth in Subsection 6.1(c) than is the TECHNOLOGY FEE
or COMPETITIVE TECHNOLOGY FEE ADJUSTMENTS in SYNGENTA'S notice under
Subsection 6.1(d)(ii). Within five (5) business days after submission of
the foregoing statements, SYNGENTA and D&PL may submit to the other PARTY
and to each of the members of the SPECIAL TECHNOLOGY FEE PANEL further
written statements supplementing their initial statements. The PARTIES'
written statements may be accompanied by any supporting documents the
submitting PARTY deems relevant.
(vi) Within twenty (20) business days after the date of
transmission of D&PL'S notice under Subsection 6.1(d)(iii), the SPECIAL
TECHNOLOGY FEE PANEL shall meet, in person or by means of
telecommunications, and shall decide, by majority vote, based the
principles for determining TECHNOLOGY FEES set forth in Subsection 6.1(C),
whether the TECHNOLOGY FEE and/or the COMPETITIVE TECHNOLOGY FEE
ADJUSTMENTS recommended by D&PL under Subsection 6.1(d)(i) or the
TECHNOLOGY FEE and/or COMPETITIVE TECHNOLOGY FEE ADJUSTMENTS designated by
SYNGENTA in its notice under Subsection 6.1(d)(ii) shall be the TECHNOLOGY
FEE and/or the COMPETITIVE TECHNOLOGY FEE ADJUSTMENTS for the forthcoming
marketing season in the subject PRICING REGION. The SPECIAL TECHNOLOGY FEE
PANEL shall be limited to selecting only one or the other of these two
amounts for the TECHNOLOGY FEE. The SPECIAL TECHNOLOGY FEE PANEL shall make
its decision based on the PARTIES' written submissions. No personal
appearances or other communications with the members of the SPECIAL
TECHNOLOGY FEE PANEL shall be permitted. The SPECIAL TECHNOLOGY FEE PANEL
shall notify SYNGENTA and D&PL in writing of their decision. The decision
of the SPECIAL TECHNOLOGY FEE PANEL shall be final and binding on SYNGENTA
and D&PL.
(vii) In the event that D&PL fails to submit a
recommendation to SYNGENTA under Subsection 6.1(d)(i) by the date specified
for its recommendation, SYNGENTA shall determine TECHNOLOGY FEES and
COMPETITIVE TECHNOLOGY FEE ADJUSTMENTS and give notice thereof to D&PL by
the twentieth (20th) business day after D&PL'S recommendation had been due,
and the procedures set forth in Subsections 6.1(d)(iii) through 6.1(d)(vi)
shall not apply.
(viii) In the event that D&PL submits its recommendations to
SYNGENTA under Subsection 6.1(d)(i) by the date specified therein, and
SYNGENTA does not give notice by the date specified in Subsection
6.1(d)(ii) of a TECHNOLOGY FEE or COMPETITIVE TECHNOLOGY FEE ADJUSTMENTS
for any of the subject PRICING REGIONS that is different from D&PL'S
recommendation, D&PL'S recommendation shall be deemed to be the TECHNOLOGY
FEE or COMPETITIVE TECHNOLOGY FEE ADJUSTMENTS set by SYNGENTA for the
forthcoming marketing season in the subject PRICING REGION and the
procedures set forth in Subsections 6.1(d)(iii) through 6.1(d)(vi) shall
not apply.
6.2 COMPENSATION TO SYNGENTA FOR LICENSE TO THE GENE. In consideration
of the rights under the LICENSE granted pursuant to Subsections 3.1, 3.2
and 3.3, and for SYNGENTA performing its responsibilities under Section 4,
D&PL shall pay the ROYALTY to SYNGENTA.
6.3 ROYALTY PERIOD. SYNGENTA'S right to receive the ROYALTY shall
begin on the date of the first COMMERCIAL SALE by D&PL or by its permitted
~ublicense of LICENSED COMMERCIAL SEED containing the Cry1Ab GENE in a
particular country in THE TERRITORY and shall end with regard to a
particular country as follows: (a) where the LICENSED COMMERCIAL SEED
contains the Cry1Ab GENE and no NON-Cry1Ab SYNGENTA LEPIDOPTERAN-ACTIVE
GENE, on the later of (i) EXPIRATION of the last-to-expire patent in that
country of LICENSED PATENT RIGHTS with one or more valid and enforceable
claim(s) which, in the absence of a license from SYNGENTA under this
LICENSE AGREEMENT, would be infringed by the making, using, or selling of
LICENSED COMMERCIAL SEED in that particular country or (ii) the tenth
(10th) anniversary of the date of the first COMMERCIAL SALE of LICENSED
COMMERCIAL SEED containing the Cry1Ab GENE by D&PL or by its ~ublicense in
that country; and (b) where the LICENSED COMMERCIAL SEED contains the
Cry1Ab GENE and a NON-Cry1Ab SYNGENTA LEPIDOPTERAN-ACTIVE GENE, then the
later of (i) EXPIRATION of the last-to-expire patent in that country of
LICENSED PATENT RIGHTS under this LICENSE AGREEMENT or under LICENSED
PATENT RIGHTS under a RELATED AGREEMENT with respect to such NON-Cry1Ab
SYNGENTA LEPIDOPTERAN-ACTIVE GENE with one or more valid and enforceable
claim(s) which, in the absence of a license from SYNGENTA under this
LICENSE AGREEMENT and/or under the RELATED AGREEMENT with respect to the
license of the NON-Cry1Ab SYNGENTA LEPIDOPTERAN-ACTIVE GENE, would be
infringed by the making, using, or selling of LICENSED COMMERCIAL SEED in
that particular country or (ii) the tenth (10th) anniversary of the date of
the first COMMERCIAL SALE of LICENSED COMMERCIAL SEED containing both the
Cry1Ab GENE and the NON-Cry1Ab SYNGENTA LEPIDOPTERAN-ACTIVE GENE in
combination, by D&PL or by its ~ublicense in that country. Upon expiration
of the applicable above-described period, D&PL shall have a permanent,
paid-up license in that particular country (a) to sell LICENSED COMMERCIAL
SEED, (b) to use said LICENSED COMMERCIAL SEED and the progeny thereof for
any purpose, including to introduce the Cry1Ab GENE and related SYNGENTA
TECHNOLOGY into other DELTAPINE CULTIVARS, and (c) to use the Cry1Ab GENE,
markers, promoters, and other genetic material that were transferred into
the specific DELTAPINE Cry1Ab CULTIVAR(S) with the Cry1Ab GENE and related
SYNGENTA TECHNOLOGY, in other DELTAPINE CULTIVARS, provided that (1)
SYNGENTA and D&PL shall each take necessary actions to maintain GOVERNMENT
APPROVAL of the Cry1Ab GENE and any then approved Cry1Ab GENE EVENTS in all
countries in THE TERRITORY where D&PL is selling LICENSED COMMERCIAL SEED
upon expiration of the ROYALTY period; provided that SYNGENTA shall have
the option to transfer responsibility for maintaining such GOVERNMENTAL
APPROVALS to D&PL by giving written notice thereof to D&PL; (2) no license
is provided either expressly or by implication under any patent which was
not part of the LICENSED PATENT RIGHTS; and (3) SYNGENTA and D&PL and its
sublicensees shall have no future responsibility to each other, in that
particular country, under Sections 11, 12, and 13 of this LICENSE AGREEMENT
with respect to the Cry1Ab GENE or LICENSED COMMERCIAL SEED containing the
Cry1Ab GENE, or the markers, promoters, and other genetic material that
were transferred to D&PL with the Cry1Ab GENE. Termination of such future
responsibilities shall not affect obligations which accrued prior to the
expiration of such period.
SECTION 7 -- BUSINESS RECORDS/PAYMENTS
7.1 D&PL BUSINESS RECORDS. D&PL shall keep records (and require, in
its sublicense agreements with permitted sublicensees, that its
sublicensees keep records) and maintain such records for a period of seven
(7) years showing the amount of LICENSED COMMERCIAL SEED sold or otherwise
transferred to third parties by D&PL and its sublicensees, if any, and
TECHNOLOGY FEES billed and collected in connection with such sales. D&PL
further agrees to permit its books and records to be examined (and to use
commercially reasonable efforts to cause its sublicensees to permit their
books and records to be examined) from time to time to the extent necessary
to verify the reports provided for in this Section 7, such confidential
examination to be made on a confidential basis by a national auditing firm,
reasonably acceptable to D&PL, appointed by and at the expense of SYNGENTA;
provided that if the results of the audit show that the amount actually due
SYNGENTA is 5% or more over and above the amount paid by D&PL, then D&PL
shall reimburse SYNGENTA for such audit expenses. If the audit determines
that there has been an underpayment or overpayment, the amount shall be
remitted promptly within thirty (30) days with interest at the rate stated
in Subsection 7.7.
7.2 D&PL REPORTS AND PAYMENTS.
(a) On or before the 10th day of each month, D&PL shall submit to
SYNGENTA a report that summarizes, by PRICING REGION to the extent then
known by D&PL, (i) the gross TECHNOLOGY FEES associated with UNITS of
particular cultivars of LICENSED COMMERCIAL SEED, if any, shipped by D&PL
and its sublicensees during the immediately preceding month, and (ii) cash
payments, discounts and any other adjustments to gross TECHNOLOGY FEES
which were approved for payment or issuance during the immediately
preceding month that are deductible in determining NET TECHNOLOGY FEE
REVENUE.
(b) On or before September 30 of each year, D&PL shall submit to
SYNGENTA a report which summarizes, by PRICING REGION (i) the gross
TECHNOLOGY FEES billed and collected, (ii) the UNITS of LICENSED COMMERCIAL
SEED of particular DELTAPINE Cry1Ab CULTIVARS(S) purchased by the LICENSED
GROWERS stated in total and, to the extent then known by D&PL, by LICENSED
GROWER, (iii) cash payments, discounts, any other adjustments to the
published gross TECHNOLOGY FEES and all other amounts deductible from
TECHNOLOGY FEES to determine NET TECHNOLOGY FEE REVENUE in total and by
each LICENSED GROWER, and (iv) the NET TECHNOLOGY FEE REVENUE received by
D&PL for the twelve (12) months ending on August 31 of that year. With each
such annual report, D&PL shall pay to SYNGENTA thirty percent (30%) of the
NET TECHNOLOGY FEE REVENUE shown on such annual report, including NET
TECHNOLOGY FEE REVENUE received by D&PL with respect to sales of LICENSED
COMMERCIAL SEED by D&PL and its sublicensees. If no such payments are due
for the subject reporting period the written report shall so state.
7.3 SYNGENTA BUSINESS RECORDS. SYNGENTA shall keep records (and, in
its licenses to permitted licensees, require that its licensees keep
records) and maintain such records for a period of seven (7) years showing
the amount of LICENSED COMMERCIAL SEED sold or otherwise transferred to
third parties by SYNGENTA (or its licensees, if any) and TECHNOLOGY FEES
due in connection with such sales and shall use commercially reasonable
efforts to require any permitted licensees on whose sales of LICENSED
COMMERCIAL SEED D&PL is entitled to payment of a percentage of the NET
TECHNOLOGY FEE REVENUE pursuant to Subsection 3.5 to keep records showing
the amount of LICENSED COMMERCIAL SEED sold or otherwise transferred to
third parties by such permitted licenses and the TECHNOLOGY FEES due in
connection with such sales. SYNGENTA further agrees to permit its books and
records to be examined and to use commercially reasonable efforts to cause
its permitted licensees to permit their books and records to be examined on
a confidential basis from time to time to the extent necessary to verify
the reports provided for in this Section 7, such confidential examination
to be made by a national auditing firm, reasonably acceptable to SYNGENTA,
appointed by and at the expense of D&PL; provided that if the results of
the audit show that the amount actually due D&PL is 5% or more over and
above the amount paid by SYNGENTA, then SYNGENTA shall reimburse D&PL for
such audit expenses. If the audit determines that there has been an
underpayment or overpayment, the amount shall be remitted promptly within
thirty (30) days with interest at the rate stated in Subsection 7.7.
7.4 SYNGENTA REPORTS AND PAYMENTS.
(a) On or before the 10th day of each month, SYNGENTA shall
submit to D&PL a report that summarizes, by PRICING REGION to the extent
then known by SYNGENTA, (i) the UNITS of particular cultivars of LICENSED
COMMERCIAL SEED, if any, shipped by SYNGENTA or its permitted licensee(s)
during the immediately preceding month on which D&PL is entitled to payment
of a percentage of the NET TECHNOLOGY FEE REVENUE pursuant to Subsection
3.5, (ii) the gross TECHNOLOGY FEES associated with the UNITS of particular
cultivars of LICENSED COMMERCIAL SEED shipped during the immediately
preceding month, and (iii) cash payments, discounts, and any other
adjustments to gross TECHNOLOGY FEES which were approved for payment or
issuance during the immediately preceding month that are deductible in
determining NET TECHNOLOGY FEE REVENUE.
(b) On or before September 30 of each year, SYNGENTA shall submit
to D&PL a report which summarizes, by PRICING REGION (i) the gross
TECHNOLOGY FEES billed and collected, (ii) the UNITS of particular
CULTIVARS of LICENSED COMMERCIAL SEED purchased by the LICENSED GROWERS
stated in total and, to the extent then known by SYNGENTA, by LICENSED
GROWER, (iii) cash payments, discounts, and any other adjustments to the
published gross TECHNOLOGY FEES deductible in determining NET TECHNOLOGY
FEE REVENUE, and (iv) the NET TECHNOLOGY FEE REVENUE due with respect to
LICENSED COMMERCIAL SEED sold by SYNGENTA or its permitted licensee(s) on
whose sales of LICENSED COMMERCIAL SEED D&PL is entitled to payment of a
percentage of the NET TECHNOLOGY FEE REVENUE for the twelve (12) months
ending on August 31 of that year. With each such annual report, SYNGENTA
shall pay to D&PL the applicable percentage of any NET TECHNOLOGY FEE
REVENUE shown on such annual report received by SYNGENTA or its permitted
licensees with respect to sales of LICENSED COMMERCIAL SEED by SYNGENTA'S
permitted licensees. If no such payments are due for the subject reporting
period the written report shall so state.
7.5 PAYMENT ADDRESS. Reports and payments due pursuant to this Section
7 shall be sent to:
If to DELTA AND PINE LAND COMPANY:
Delta and Pine Land Company
One Cotton Row
Scott, Mississippi 38772
Attention: President
If to SYNGENTA:
SYNGENTA CROP PROTECTION AG
Schwardzwaldallee 215
CH- 4058, Basel, Switzerland
Attention: Head of Finance
or other such addresses as may be designated by the PARTIES from time
to time.
7.6 PAYMENTS.
(a) Payments due to SYNGENTA shall be paid by wire transfer as
SYNGENTA shall from time to time direct. Except when such direction is for
payment to be made in local currency or as otherwise provided herein, all
amounts to be paid to SYNGENTA shall be calculated in U.S. dollars using
the U.S. dollar buying exchange rate (if applicable) at D&PL's financial
institution in effect on the date on which the payment is due. Payments due
to D&PL shall be paid by wire transfer as D&PL shall from time to time
direct. Except when such direction is for payment to be made in local
currency or as otherwise provided herein, all amounts to be paid to D&PL
shall be calculated in U.S. dollars using the U.S. dollar buying exchange
rate (if applicable) at SYNGENTA'S financial institution in effect on the
date on which the payment is due. Deductions of income and withholding
taxes shall be made from payments as required by applicable laws and
regulations. Deductions shall also be made from any amount owed under this
LICENSE AGREEMENT of one half of the amount of any foreign exchange fees,
fax fees, bank charges and like transactional costs. Appropriate documents
evidencing and supporting any such deductions shall be provided at the time
payment is made.
(b) With respect to all payments due under this LICENSE AGREEMENT
that are subject to approval by any government agency having regulatory
authority over the transfer of payments and such other laws and regulations
that may apply, the PARTY obligated to make such payments shall use
commercially reasonable efforts to obtain such approval and the other PARTY
shall, upon request, provide assistance and information needed to obtain
such approval upon request. In the event of a lack of government approval
to transmit payments hereunder, the PARTY obligated to make such payments
shall use commercially reasonable efforts to place all sums constituting
payments due to the other PARTY under this LICENSE AGREEMENT in an interest
bearing account for the benefit of the PARTY entitled to the payment.
Provided however, that in the event such payments are not, despite that
PARTY'S commercially reasonable efforts, placed in such interest bearing
account, no interest thereon shall accrue.
7.7 INTEREST ON OUTSTANDING BALANCES. If D&PL or SYNGENTA fails to pay
on any due date any amount which is payable under this LICENSE AGREEMENT,
then, without prejudice to other remedies, that amount shall bear interest
at the "Prime Rate on Corporate Loans at Large U. S. Money Center
Commercial Banks" as reported by the Wall Street Journal on said due date
plus three percent (3%) per annum from the due date until payment is made
in full, both before and after any judgment.
7.8 SYNGENTA PATENT RECORDS.
[Text in Exhibit I]
SECTION 8 -- CONFIDENTIALITY
8.1 NON-DISCLOSURE OF CONFIDENTIAL INFORMATION.
(a) Neither D&PL nor SYNGENTA shall, at any time during the
period specified by Subsection 8.2, disclose to any other person any
confidential TECHNOLOGY or other confidential information which has been
disclosed to it by the other PARTY or the terms of this LICENSE AGREEMENT
or the RELATED AGREEMENTS except with the prior written consent of the
other PARTY or as provided in Subsection 8.3; provided, however, (i)
SYNGENTA shall be permitted to disclose information relating to performance
of the Cry1Ab GENE to the extent such disclosure is necessary or desirable
for the development and commercialization of cotton seed containing the
Cry1Ab GENE, provided, further that, SYNGENTA shall not disclose
information relating specifically only to DELTAPINE CULTIVARS, and (ii)
D&PL shall be permitted to disclose any information relating to the
performance of DELTAPINE Cry1Ab CULTIVAR(S) to the extent required under
contracts with licensors of NON-SYNGENTA GENE(S) contained therein.
(b) SYNGENTA shall not disclose confidential D&PL pricing, sales
or other sensitive information to any competitor of D&PL. To the extent
that such arrangements are commercially practical with SYNGENTA'S existing
personnel staffing levels, SYNGENTA shall use separate personnel to handle
D&PL sensitive commercial information from the personnel with access to
commercial information from any competitor of D&PL.
8.2 PERIOD OF CONFIDENTIALITY. The period referred to in Subsection
8.1 shall be the period beginning with the date of receipt of the
confidential TECHNOLOGY or other confidential information and ending, with
respect to that TECHNOLOGY, as long as such information is entitled to
trade secret protection under applicable law and such information is
identified in writing by the disclosing PARTY as entitled to such trade
secret protection at the time of disclosure, and as to other confidential
information, ten (10) years after receipt of such confidential information,
provided that, to the extent information submitted in support of
applications for regulatory approvals and clearance are subject to
confidential treatment under applicable laws and regulations for a longer
period, the period of confidentiality under Subsection 8.1 as to such
information submitted in support for regulatory approvals and clearance
shall extend until the expiration of such longer period for confidential
treatment under such applicable laws and regulations.
8.3 USES OF CONFIDENTIAL INFORMATION. Subject to the overriding
provisions of Subsections 5.3 and 5.4, any TECHNOLOGY or other confidential
information which is disclosed by either D&PL or SYNGENTA to the other
PARTY may be:
(a) Disclosed by the RECIPIENT to any directors, officers,
employees, agents or contractors of the RECIPIENT, to such extent only as
is reasonably necessary for fulfillment of the RECIPIENT'S obligations
under this LICENSE AGREEMENT or under the COMMERCIAL DEVELOPMENT PLAN or
for the commercial exploitation of the cotton seed containing the GENE, and
subject, in each case, to the RECIPIENT'S obligating the person in question
to hold the same confidential by written agreement coincident in scope and
term with the confidentiality obligation of this LICENSE AGREEMENT and that
person further agreeing not to use the same except for the purposes for
which the disclosure is made;
(b) Disclosed by the RECIPIENT to any governmental or other
authority or regulatory body to the extent required by law. Provided,
however, that the RECIPIENT shall take all reasonable measures to seek to
ensure that such authority or body keeps the same confidential and does not
use the same except for the purpose for which such disclosure is made to
the extent that confidential treatment is available under applicable
statutes or regulations. Provided, further, that the PARTY proposing to so
disclose shall give prior notice of that intent to the PARTY which
disclosed such TECHNOLOGY and/or other confidential information and permit
said other PARTY, at its option, to contest said requirement and to seek
confidential treatment of such TECHNOLOGY or information;
(c) Disclosed to a court or litigant, to the extent such
disclosure is ordered by a court or government agency of competent
jurisdiction. Provided, however, that the RECIPIENT shall take reasonable
measures to seek to ensure that the court, other litigants, or government
agency keep the same confidential and does not use the same except for the
purpose for which such disclosure is made. Provided, further, that the
PARTY proposing to so disclose shall give prior notice of that intent to
the PARTY which disclosed such TECHNOLOGY and/or other confidential
information and permit said other PARTY, at its option to contest said
requirement and to seek confidential treatment of such TECHNOLOGY or
information; and
(d) Used by the RECIPIENT for any purpose, or disclosed by the
RECIPIENT to any other person, to the extent only that it is on the
EFFECTIVE DATE or thereafter becomes, public knowledge through no fault of
the RECIPIENT, or is disclosed to the RECIPIENT by a third party as a
matter of right, or can be shown by the RECIPIENT by written records to
have been known to the RECIPIENT prior to such disclosure.
SECTION 9 -- FORCE MAJEURE
9.1 FORCE MAJEURE. Except with regard to any payments required
pursuant to this LICENSE AGREEMENT, no PARTY shall be liable for delay or
failure to perform, in whole or in part, by reason of contingencies beyond
its reasonable control ("Force Majeure"), whether herein specifically
enumerated or not, including, among others, acts of God, war, acts of war,
revolution, civil commotion, riots, acts of public enemies, terrorism,
blockade or embargo, delays of carriers, car shortage, fire, explosion,
breakdown of equipment, strike, chemical reversal reactions, lockout, labor
dispute, casualty or accident, earthquake, epidemic, flood, cyclone,
tornado, hurricane or other windstorm, delays of vendors, or by reason of
any law, order, proclamation, regulation, ordinance, demand, requisition,
requirement or any other act of any government authority, including, but
not limited to, government actions restricting or preventing the growing of
LICENSED COMMERCIAL SEED in areas where D&PL has historically produced
seed; provided, however, that the PARTY so affected shall, as promptly as
reasonably possible under the circumstances, give written or oral notice to
the other PARTY whenever such a contingency appears likely to occur or has
occurred and shall use all reasonable efforts to overcome the effects of
the contingency as promptly as possible and shall allow each such PARTY
such access and information as may be necessary or desirable to evaluate
such contingency. No PARTY shall be required to resolve a strike, lockout
or other labor problem in a manner which it alone does not deem proper and
advisable. If any PARTY is affected by an event of the sort enumerated in
or contemplated by this Subsection 9.1, it may suspend performance of this
LICENSE AGREEMENT for a period of time equal to the duration of the event
excusing such performance and the time required to overcome the
consequences of such event and resume performance. The affected PARTY shall
complete performance as required by this LICENSE AGREEMENT as soon as
practicable after removal or cessation of the cause for the delay or
reduction in performance.
SECTION 10 -- TERM AND TERMINATION
10.1 TERM OF LICENSES. The term of the LICENSES granted pursuant to
this LICENSE AGREEMENT shall begin on the EFFECTIVE DATE and shall continue
in perpetuity so long as LICENSED COMMERCIAL SEED is sold, licensed or used
in THE TERRITORY as provided herein, unless the LICENSES are terminated
earlier pursuant to a provision of this Section 10 or otherwise under the
terms of this LICENSE AGREEMENT.
10.2 TERMINATION.
[Text in Exhibit L]
10.3 BREACH OF OBLIGATIONS. Breach by SYNGENTA of any of the material
provisions of this LICENSE AGREEMENT (other than default upon any of the
payment obligations provided herein) shall entitle D&PL to give SYNGENTA
notice to cure such breach or default. Breach by D&PL of any of the
material provisions of this LICENSE AGREEMENT (other than default upon any
of the payment obligations provided herein) shall entitle SYNGENTA to give
D&PL notice to cure such breach. If a breach is not cured within the ninety
(90) day period, the materially-affected PARTY may terminate this LICENSE
AGREEMENT by giving notice to the other PARTY to take effect immediately,
provided that the non-breaching PARTY shall not have such right to
terminate if existence of the alleged breach is subject to dispute
resolution under Subsection 14.12 on the date on which a termination notice
could otherwise have been given and is cured, as necessary, within thirty
(30) days after the conclusion of any dispute resolution proceeding
thereunder (including any arbitration proceedings), provided that if the
DISPUTE relating to the alleged default is referred to arbitration under
Subsection 14.12(b) and the arbitration panel has not rendered a final
decision on the DISPUTE within one hundred eighty (180) days after the date
on which the initial notice of referral of the subject DISPUTE to
arbitration was given, a non-breaching PARTY (if it has not caused or
materially contributed to the delay in rendition of the arbitration panel's
decision) may thereupon give notice of termination based upon any then
uncured material breach described in its original notice under this
Subsection 10.3 to take effect immediately.
10.4 DEFAULT ON PAYMENT. In the event of default on any payment due by
SYNGENTA to D&PL or by D&PL to SYNGENTA hereunder and failure to cure such
default within sixty (60) days of notice, the non-defaulting PARTY shall
have the right to terminate this LICENSE AGREEMENT by giving notice to the
defaulting PARTY to take effect immediately, provided that the
non-defaulting PARTY shall not have a right to terminate if the alleged
default is then subject to dispute resolution under Subsection 14.12 on the
date on which a termination notice could otherwise have been given and is
cured, as necessary, within thirty (30) days after the conclusion of any
dispute resolution proceeding thereunder (including any arbitration
proceedings), provided that if the DISPUTE relating to the alleged default
is referred to arbitration under Subsection 14.12(b) and the arbitration
panel has not rendered a final decision on the DISPUTE within one hundred
eighty (180) days after the date on which the initial notice of referral of
the subject DISPUTE to arbitration was given, a non-breaching PARTY (if it
has not caused or materially contributed to the delay in rendition of the
arbitration panel's decision) may thereupon give notice of termination
based upon any then uncured default in payment described in its original
notice under this Subsection 10.4 to take effect immediately.
10.5 EFFECT OF TERMINATION.
[Text in Exhibit L]
10.6 SURVIVAL OF COVENANTS. Notwithstanding the termination of this
LICENSE AGREEMENT by notice or otherwise, the rights and obligations
conferred by Sections 6, 7, 8 and 11, 12, 13, and 14 with respect to events
which occurred prior to such termination shall survive termination.
SECTION 11 -- WARRANTIES AND WARRANTY LIMITATIONS
11.1 SYNGENTA WARRANTIES. SYNGENTA hereby warrants and represents
that:
(a) As of the DATE OF APPROVAL FOR COMMERCIAL SALE of each Cry1Ab
GENE EVENT in a particular country, SYNGENTA: (i) is the owner or licensee
of the Cry1Ab GENE, the subject Cry1Ab GENE EVENT, and SYNGENTA TECHNOLOGY
used in the development thereof; (ii) is owner or licensee of the LICENSED
PATENT RIGHTS; and (iii) has the right to license (or sublicense) to D&PL
the Cry1Ab GENE, the subject Cry1Ab GENE EVENT, and LICENSED PATENT RIGHTS
and SYNGENTA TECHNOLOGY used in the development thereof for use under the
terms of this LICENSE AGREEMENT in the subject country;
(b) As of the EFFECTIVE DATE, to the best of SYNGENTA'S knowledge
there is no valid and enforceable third-party United States patent or
foreign patent, not then a part of the LICENSED PATENT RIGHTS, that will
preclude or restrict either SYNGENTA'S or D&PL'S lawful performance under
this LICENSE AGREEMENT in the subject country;
(c) As of the date on which SYNGENTA gives the notice described
in Subsection 4.3(b) with respect to a Cry1Ab GENE EVENT in a particular
country in which SYNGENTA is responsible for obtaining GOVERNMENT APPROVAL,
GOVERNMENT APPROVAL has been obtained for that country; and
(d) All material information that SYNGENTA has provided or
hereafter provides to any government agency for the purpose of obtaining
GOVERNMENT APPROVAL is, to the best of SYNGENTA'S knowledge and belief,
true and correct in all material respects. Provided, however, that this
warranty is not made to D&PL with respect to any such information which was
supplied to SYNGENTA by D&PL and which was thereafter provided in the same
or substantially the same form by SYNGENTA to a government agency nor
information with respect to a NON-SYNGENTA GENE received by SYNGENTA from
or through D&PL as to which information SYNGENTA makes no warranties,
express or implied.
(e) SYNGENTA'S utilization of the procedures and materials that
SYNGENTA has employed or may hereafter employ in the development and
evaluation of the Cry1Ab GENE and/or any Cry1Ab GENE EVENT does not
contravene any provision of any agreement or contract binding upon
SYNGENTA.
(f) If on the EFFECTIVE DATE or thereafter, SYNGENTA is obligated
to pay royalties to any third party for rights under the LICENSED PATENT
RIGHTS, SYNGENTA shall pay, in full and by the date due, all such royalties
(subject to any reimbursement as provided in Section 12.1(b) if
applicable). As of the EFFECTIVE DATE, no uncured breach or default exists
under any agreement or contract relating to SYNGENTA'S rights to practice
and to sublicense D&PL under any third party patent or patent application
which is part of the LICENSED PATENT RIGHTS, and, to the best of SYNGENTA'S
knowledge, no condition exists which, if not cured, would result in such a
breach or default.
11.2 D&PL WARRANTIES. D&PL hereby warrants and represents that:
(a) D&PL shall not sell (and shall require in any sublicense
granted pursuant to Section 3.4 that its ~ublicense shall not sell),
without the written approval of SYNGENTA, LICENSED COMMERCIAL SEED that
fails to meet the SEED PURITY STANDARD for the Cry1Ab GENE EVENT embodied
therein and/or that fails to meet the GENE EQUIVALENCY STANDARD for the
Cry1Ab GENE EVENT. D&PL shall keep lot samples of all LICENSE COMMERCIAL
SEED sold by D&PL following the protocol set forth in the COMMERCIAL
DEVELOPMENT PLAN for at least two (2) years following the date of creation
of such lot of LICENSED COMMERCIAL SEED.
(b) [Text in Item 10 of Exhibit K]
(c) As of the date on which D&PL commences COMMERCIAL SALE of
LICENSED COMMERCIAL SEED of any particular DELTAPINE Cry1Ab CULTIVAR in any
particular country, the COMMERCIAL SALE of such LICENSED COMMERCIAL SEED
does not contravene any provision of any agreement with any third party
binding upon D&PL. D&PL shall have used commercially reasonable efforts to
determine that, as of the date on which any ~ublicense of D&PL commences
COMMERCIAL SALE of LICENSED COMMERCIAL SEED of any particular ~ublicense
Cry1Ab CULTIVAR in any particular country, the COMMERCIAL SALE of such
LICENSED COMMERCIAL SEED does not contravene any provision of any agreement
with any third party binding upon such ~ublicense.
11.3 MUTUAL WARRANTIES.
(a) SYNGENTA warrants to D&PL that this LICENSE AGREEMENT does
not and, performance by SYNGENTA of its obligations hereunder will not,
contravene any provision of any agreement or contract binding upon
SYNGENTA.
(b) D&PL warrants to SYNGENTA that this LICENSE AGREEMENT does
not, and performance by D&PL of its obligations hereunder will not,
contravene any provision of any agreement or contract binding upon D&PL.
11.4 NO OTHER WARRANTIES. IT IS EXPRESSLY UNDERSTOOD THAT D&PL AND
SYNGENTA MAKE NO REPRESENTATIONS, EXTEND NO WARRANTIES, EITHER EXPRESS OR
IMPLIED, AND ASSUME NO RESPONSIBILITIES, OTHER THAN EXPRESSLY PROVIDED FOR
HEREIN, WITH RESPECT TO:
(a) THE PERFORMANCE, MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE OF THE GENE, RELATED SYNGENTA TECHNOLOGY, LICENSED COMMERCIAL SEED,
DELTAPINE CULTIVARS, AND DELTAPINE Cry1Ab CULTIVARS;
(b) THE SCOPE OR VALIDITY OF ANY PATENT OF THE LICENSED PATENT
RIGHTS, OR
(c) THE Cry1Ab GENE, RELATED SYNGENTA TECHNOLOGY, LICENSED
COMMERCIAL SEED, DELTAPINE CULTIVARS, DELTAPINE Cry1Ab CULTIVARS, OR USE
THEREOF BEING FREE FROM INFRINGEMENT OF PATENTS OTHER THAN LICENSED PATENT
RIGHTS.
11.5 EXCLUSIVE REMEDY. Except to the extent that D&PL establishes that
it was induced to enter this LICENSE AGREEMENT as a result of SYNGENTA'S
fraud, intentional misrepresentation or misrepresentation due to gross
negligence related to whether D&PL's and its sublicensees' activities under
this LICENSE AGREEMENT infringe a claim of a third party patent or whether
the LICENSED PATENTS and/or the SYNGENTA TECHNOLOGY are valid or
enforceable, D&PL'S and its sublicensees' exclusive remedies for losses,
damages, or liability, resulting from a claim that their activities under
this LICENSE AGREEMENT infringe a claim of a third party patent or that the
LICENSED PATENTS and/or the SYNGENTA TECHNOLOGY are not valid or
enforceable, are the patent indemnification obligations expressly set forth
in Section 12 of this LICENSE AGREEMENT. A dispute as to whether D&PL has
established that it was so induced shall be subject to the dispute
resolution process under Subsection 14.12 of this LICENSE AGREEMENT.
Notwithstanding anything to the contrary in this LICENSE AGREEMENT or a
RELATED AGREEMENT, including without limitation Section 12, SYNGENTA shall
have no liability or obligations with respect to a claim that D&PL's and
its sublicensees' activities under this LICENSE AGREEMENT or a RELATED
AGREEMENT infringe a claim of third party patent with respect to a GENE
which has not been licensed by SYNGENTA to D&PL under this LICENSE
AGREEMENT or under a RELATED AGREEMENT.
SECTION 12 -- PATENT INFRINGEMENT
[Text in Exhibit I]
SECTION 13 -- CLAIMS BY VENDEES FOR FAILURE OF GENE PERFORMANCE
[Text in Exhibit M]
SECTION 14-- GENERAL
14.1 ASSIGNMENT OF D&PL'S RIGHTS AND OBLIGATIONS.
(a) The rights and obligations under this LICENSE AGREEMENT
pertaining to D&PL are personal to D&PL and D&PL shall not (by operation of
law or otherwise) assign, mortgage, pledge as security, or sublicense any
of its rights hereunder, nor shall D&PL subcontract or delegate (other than
in the ordinary course of business) any of its obligations hereunder
(except as otherwise provided in this LICENSE AGREEMENT), except with the
prior written consent of SYNGENTA, provided that, without the consent of
SYNGENTA, (i) D&PL may, in the ordinary course of business, subcontract or
delegate performance of its obligations under this LICENSE AGREEMENT
(including, but not limited to, breeding, development, increase, testing,
and marketing seed and collecting TECHNOLOGY FEES) to third parties under
contract with D&PL, provided that D&PL shall remain liable to SYNGENTA with
respect to performance of D&PL'S obligations under this LICENSE AGREEMENT
by such third party(ies), and (ii) D&PL shall have the right to assign this
LICENSE AGREEMENT and the rights and obligations hereunder (A) to an
AFFILIATE of D&PL or (B) to a third party in connection with the
reorganization, consolidation, spin-off, sale, or transfer of all or
substantially all of its stock or the assets of D&PL'S cotton seed
business, either alone or in conjunction with other D&PL business, provided
that, as a condition of such assignment, the assignee shall agree in
writing to be bound by the provisions hereof.
(b) The provisions of Subsection 14.1(a) notwithstanding, in the
event of a MONSANTO/D&PL CHANGE OF CONTROL TRANSACTION, the provisions of
the LICENSE ACQUISITION AGREEMENT and this LICENSE AGREEMENT expressly
relating to a MONSANTO/D&PL CHANGE OF CONTROL TRANSACTION shall apply.
14.2 ASSIGNMENT OF SYNGENTA'S RIGHTS AND OBLIGATIONS.
(a) The rights and obligations under this LICENSE AGREEMENT
pertaining to SYNGENTA are personal to SYNGENTA and SYNGENTA shall not (by
operation of law or otherwise) assign, mortgage, or pledge as security any
of its rights hereunder, nor shall SYNGENTA subcontract or otherwise
delegate (other than in the ordinary course of business) any of its
obligations hereunder (except as otherwise provided in this LICENSE
AGREEMENT), except with the prior written consent of D&PL, provided that,
without the consent of D&PL, (i) when expressly permitted to do so under
other provisions of this LICENSE AGREEMENT, SYNGENTA may, in the ordinary
course of business, subcontract or delegate performance of its obligations
under this LICENSE AGREEMENT (including, but not limited to, breeding,
development, increase, testing, and marketing seed and collecting
TECHNOLOGY FEES) to third parties under contract with SYNGENTA, provided
that SYNGENTA shall remain liable to D&PL with respect to performance of
SYNGENTA'S obligations under this LICENSE AGREEMENT by such third
party(ies), and (ii) SYNGENTA shall have the right to assign this LICENSE
AGREEMENT and the rights and obligations hereunder (A) to an AFFILIATE of
SYNGENTA or (B) to a third party in connection with the reorganization,
consolidation, spin-off, sale, or transfer of all or substantially all of
its stock or its assets related to research and development in the field of
cotton, or such other business unit of SYNGENTA as may then be responsible
for compliance with this LICENSE AGREEMENT, either alone or in conjunction
with other SYNGENTA business, provided that, as a condition of such
assignment, the assignee shall agree in writing to be bound by the
provisions hereof.
(b) [Text in Item 11 of Exhibit K]
14.3 RELATION OF PARTIES. Nothing in this LICENSE AGREEMENT shall
create, or be deemed to create, a partnership, or the relationship of
principal and agent among the parties. SYNGENTA CROP PROTECTION AG and
DELTA AND PINE LAND COMPANY shall each be primarily liable for and shall
guarantee the payment and performance of all of the obligations of their
respective AFFILIATES hereunder.
14.4 INTEGRATION OF CONTRACT. This LICENSE AGREEMENT constitutes the
full understanding of the PARTIES, a complete allocation of risks between
them and a complete and exclusive statement of the terms and conditions of
their agreement relating to the subject matter hereof and thereof and all
prior agreements, negotiations, dealings and understandings, whether oral
or written, regarding the subject matter hereof and thereof, are hereby
superceded and merged into this LICENSE AGREEMENT and the LICENSE
ACQUISITION AGREEMENT and the RELATED AGREEMENTS entered into by D&PL and
SYNGENTA pursuant to the LICENSE ACQUISITION AGREEMENT, provided that
******
14.5 WAIVERS AND AMENDMENTS. This LICENSE AGREEMENT may be amended,
superceded, canceled, renewed or extended, and the terms hereof may be
waived, only by a written instrument signed by both PARTIES, or, in the
case of a waiver, by the party or parties waiving compliance. Except where
a specific period for action or inaction is provided herein, no delay on
the part of any party in exercising any right, power or privilege hereunder
shall operate as a waiver thereof. Nor shall any waiver on the part of any
party of any such right, power or privilege, nor any single or partial
exercise of any such right, power or privilege, preclude any further
exercise thereof or the exercise of any subsequent or other such right,
power or privilege. Except as otherwise provided herein, no conditions,
usage of trade, course of dealing or performance, understanding or
agreement purporting to modify, vary, explain or supplement the terms or
conditions of this LICENSE AGREEMENT shall be binding unless hereafter made
in writing and signed by the party to be bound, or by a written amendment
hereof executed by both PARTIES, and no modification shall be effected by
the acknowledgement or acceptance of any forms or other documents
containing terms or conditions at variance with or in addition to those set
forth in this LICENSE AGREEMENT.
14.6 HEADINGS. Section and Subsection headings as to the contents of
particular Sections and Subsections are for convenience only and are in no
way to be construed as part of this LICENSE AGREEMENT or as a limitation of
the scope of the particular Section or Subsection to which they refer.
14.7 REFERENCES TO SECTIONS, SUBSECTIONS AND EXHIBITS. Unless
otherwise expressly stated, all Sections and Subsections referred to herein
are Sections and Subsections of this LICENSE AGREEMENT, and all Exhibits
referred to herein are Exhibits attached hereto.
14.8 PARTIAL INVALIDITY. If any provision of this LICENSE AGREEMENT is
held by any competent authority to be invalid or unenforceable in whole or
in part, this LICENSE AGREEMENT shall continue to be valid as to the other
provisions thereof and the remainder of the affected provision, provided
that in the event that the absence of such provision(s) causes a material
adverse change in either the risks or benefits of this LICENSE AGREEMENT to
any party, the parties shall negotiate in good faith concerning a
commercially reasonable substitute or replacement for the invalid or
unenforceable provision(s).
14.9 GOVERNING CONTRACT LAW. THIS LICENSE AGREEMENT SHALL, EXCEPT AS
PROVIDED IN SUBSECTION 14.10, BE GOVERNED AND CONSTRUED IN ALL RESPECTS IN
ACCORDANCE WITH THE LAWS OF THE STATE OF DELAWARE (OTHER THAN ITS CONFLICTS
OF LAW RULES), INCLUDING, BUT NOT LIMITED TO, ITS STATUTES OF LIMITATION.
14.10 GOVERNING PATENT LAW. Any question arising out of this LICENSE
AGREEMENT as to the validity, construction or effect of any United States
patent shall be decided in accordance with Title 35 United States Code,
related provisions of the United States Code and applicable judicial and
U.S. Patent and Trademark Office precedents, and of any foreign patent
shall be decided in accordance with applicable patent laws.
14.11 NOTICES. Any notice or other information required or authorized
by this LICENSE AGREEMENT to be given by either PARTY to the other PARTY
shall be given in writing and shall be deemed sufficiently given when
delivered by hand, or transmitted by express mail or overnight courier
service, or transmitted by facsimile or other means of electronic data
transmission, confirmed by express mail or overnight courier service, to
the following addresses of the other PARTY or such other address(es) as is
(are) notified to such PARTY by the other PARTY from time to time.
If to D&PL: Delta and Pine Land Company
One Cotton Row
Scott, Mississippi 38772
USA
Attention: President
With copy to: Jerome C. Hafter
Phelps Dunbar, LLP
111 East Capitol Street
Suite 600
Jackson, Mississippi 39201
USA
If to SYNGENTA: SYNGENTA CROP PROTECTION AG
Schwarzwaldallee 215
CH - 4058, Basel
Switzerland
Attention: Chief Operating Officer,
Syngenta Seeds
With copy to: SYNGENTA INTERNATIONAL AG
Schwarzwaldallee 215
CH - 4058, Basel
Switzerland
Attention: General Counsel
14.12 DISPUTE RESOLUTION.
(a) Any claim, dispute, difference or controversy between the
PARTIES arising out of, or relating to, this LICENSE AGREEMENT which has
not been settled by mutual understanding between the PARTIES (a "DISPUTE")
shall be submitted within thirty (30) days of the initial written notice of
the existence of such DISPUTE to a panel consisting of a senior executive
nominated by each PARTY (the "PANEL"). Such PANEL shall meet and use
reasonable efforts to resolve said Dispute.
(b) If the DISPUTE has not been resolved within thirty (30) days
of submission to the PANEL, then either PARTY may invoke the following
arbitration rights except as to those matters which are to be submitted to
the SPECIAL TECHNOLOGY FEE PANEL as provided in this LICENSE AGREEMENT:
(i) The DISPUTE shall be referred to arbitration under the
rules of the American Arbitration Association (AAA) to the extent that such
rules are not inconsistent with the provisions of this Subsection 14.12.
Judgment upon the award of the arbitrators may be entered in any court
having jurisdiction thereof or application may be made to such court for a
judicial confirmation of the award and an order of enforcement, as the case
may be. Unless the period for consideration by the PANEL is extended by
mutual written agreement, any demand for arbitration shall be made within
ten (10) days after expiration of the thirty (30) day period for resolution
of the DISPUTE in question by the PANEL and, in any event, shall not be
made after the date when institution of legal or equitable proceedings,
based on such DISPUTE would be barred by the applicable statute of
limitations.
(ii) The independent arbitration panel shall consist of
three (3) independent arbitrators, one (1) of whom shall be appointed by
SYNGENTA and one (1) of whom shall be appointed by D&PL. In the event that
one (1) PARTY does not designate an arbitrator, the other PARTY may request
the Executive Secretary of the AAA to designate an arbitrator for such
PARTY. The two (2) arbitrators thus appointed shall choose a third (3rd)
arbitrator; provided, however, that, if the arbitrators selected by the
PARTIES involved in the DISPUTE do not agree on the appointment of such
additional arbitrator, any of the selected arbitrators may petition the
Executive Secretary of the AAA to make the appointment of such additional
arbitrator.
(iii) The place of arbitration shall be Memphis, Tennessee,
USA.
(iv) The arbitrators shall be instructed to render their
final decision on the DISPUTE at the earliest practical date and, in any
event, not later than one hundred eighty (180) days from the date on which
the demand for arbitration of the subject DISPUTE was made by a PARTY.
(v) The arbitration filing fees and other costs of the
arbitration panel shall be paid by the PARTY that has submitted the DISPUTE
to arbitration; provided that the PARTY that does not prevail based on the
arbitrators' decision shall reimburse the prevailing PARTY for such fees
and expenses if they had been initially paid by such prevailing PARTY.
Otherwise each PARTY shall bear its own costs and expenses of the
arbitration including its own attorneys fees.
(c) Pending resolution of any DISPUTE, each PARTY involved in the
DISPUTE shall make reasonable efforts to minimize adverse economic
consequences to the PARTIES under this LICENSE AGREEMENT and the other
RELATED AGREEMENTS which would result from any delays caused by attempts to
resolve the DISPUTE. Such reasonable effort shall include, without
limitation, continued performance of relevant obligations under a
reservation of rights in lieu of termination and nonperformance, and
nothing contained in this Subsection 14.12 shall serve to preclude any
PARTY from its right to seek any judicial remedy at law or equity to
enforce the award of the arbitrators or to exercise its other rights, if
any, under this LICENSE AGREEMENT.
(d) Anything in this Subsection 14.12 notwithstanding, this
Subsection 14.12 shall not apply to the establishment of TECHNOLOGY FEES
where Subsection 6.1(d) applies and shall not apply to any dispute with
respect to matters under Subsection 4.4(C)(i), 4.4(C)(ii) and/or
4.4(C)(iii) where such dispute has been submitted to the SPECIAL TECHNOLOGY
FEE PANEL as provided in Subsections 4.5(d)(iv) and (v).
14.13 INCORPORATION OF EXHIBITS. Exhibits A-H, inclusive, are
incorporated herein and made a part hereto.
IN WITNESS WHEREOF, this LICENSE AGREEMENT has been executed by
duly authorized representatives of the PARTIES herein.
DELTA AND PINE LAND COMPANY
By:
---------------------------------
Title:
------------------------------
SYNGENTA CROP PROTECTION AG
By:
---------------------------------
Title:
------------------------------
By:
---------------------------------
Title:
------------------------------
EXHIBIT A
LICENSED PATENT RIGHTS
******
EXHIBIT B
Cry1Ab GENE TRADEMARK LICENSE AGREEMENT
This Agreement, made as of the _______ day of ___________, 20____, by
and between SYNGENTA PARTICIPATIONS AG, a company organized under the laws
of Switzerland, having a place of business at Schwarzwaldallee 215,
CH-4058, Basel, Switzerland (hereinafter referred to as "SYNGENTA"), and
Delta and Pine Land Company, a corporation organized and existing under the
laws of the State of Delaware, having its principal place of business at
One Cotton Row, Scott, Mississippi 38772 (hereinafter referred to as
"LICENSEE"). SYNGENTA and LICENSEE each a "Party" and, jointly, the
"Parties".
WITNESSETH:
WHEREAS, SYNGENTA is the owner of the trademark, which is the subject
of [country] trademark application no. ________________ for Cry1Ab GENE(S)
(as defined in the LICENSE AGREEMENT) (hereinafter referred to as the
"Cry1Ab Gene Trademark"); and
WHEREAS, SYNGENTA'S Affiliate Syngenta Crop Protection AG and LICENSEE
are parties to the Cry1Ab Gene License Agreement effective ____________,
2004, directed to the licensing of certain SYNGENTA patent rights and
technology relating to transgenic cotton plants containing insect
resistance genes (hereinafter referred to as the "LICENSE AGREEMENT"); and
WHEREAS, LICENSEE desires to obtain a license to use the Cry1Ab Gene
Trademark in connection with the sale of transgenic cotton seed containing
Cry1Ab insect resistance genes licensed to D&PL pursuant to the LICENSE
AGREEMENT and the Parties wish to use the Cry1Ab GENE TRADEMARK in
accordance with the LICENSE AGREEMENT;
NOW, THEREFORE, in consideration of the mutual undertakings and
obligations herein obtained, the parties agree as follows:
1. SYNGENTA hereby grants to LICENSEE, subject to all of the terms and
conditions herein contained, a non-exclusive, royalty-free license to use
the Cry1Ab Gene Trademark on or in relation to cottonseed which contains
Cry1Ab GENE(S) and which has been produced pursuant to the LICENSE
AGREEMENT (hereinafter referred to as "Goods"). This license shall be
assignable to a third party only in the manner specified in Section 14.1 of
the LICENSE AGREEMENT and only as part and parcel of an assignment of the
LICENSE AGREEMENT.
2. LICENSEE agrees that to use the Cry1Ab Gene Trademark on all Goods,
but only on Goods which meet the criteria for "COMMERCIAL INSECT
RESISTANCE" as defined in the LICENSE AGREEMENT.
3. SYNGENTA shall have the right at all reasonable times to inspect
and examine the methods, processes and containers used by LICENSEE in
bagging, treating and storing the Goods on which the LICENSEE uses the
Cry1Ab Gene Trademark and to request samples of such Goods and containers.
LICENSEE agrees to permit such inspections and examinations and to furnish
such samples. Such inspection and examination shall be for the sole purpose
of confirming that the quality of the Goods meets the standards set forth
in writing by SYNGENTA and shall not be used for any competitive purpose
whatsoever. D&PL may at any time require that such inspections and
evaluations be conducted on a confidential basis by a third-party inspector
selected by SYNGENTA and acceptable by D&PL, which inspector shall report
to SYNGENTA and D&PL only whether or not D&PL is in compliance with this
Cry1Ab GENE TRADEMARK AGREEMENT, and if not in compliance, the areas of
non-compliance without otherwise disclosing to SYNGENTA D&PL's methods and
procedures.
4. LICENSEE shall have the right to use the Cry1Ab Gene Trademark in
advertising and promotional literature and the like, as well as on labels,
packaging, containers and the like, for the Goods sold pursuant to the
LICENSE AGREEMENT. LICENSEE agrees that each such use of the Cry1Ab Gene
Trademark shall be in accordance with the provisions of Section 3.8 of the
LICENSE AGREEMENT and agrees that the Cry1Ab Gene Trademark shall be keyed
by an asterisk to a footnote reading "Trademark of, and used under license
from, a Syngenta Group Company". After the Cry1Ab Gene Trademark has been
registered in [Country], SYNGENTA will notify the LICENSEE of the
registration and thereafter LICENSEE shall change the asterisk to the (R)
symbol which shall be keyed to the footnote "Registered trademark of, and
used under license from, a Syngenta Group Company".
5. LICENSEE agrees to submit to SYNGENTA'S representatives upon
reasonable request, samples of labels, packaging, containers, advertising,
promotional materials and other materials to which the Cry1Ab Gene
Trademark is applied.
6. The term of this Agreement shall be coextensive with the term of
the LICENSE AGREEMENT unless sooner terminated in accordance with the terms
of Section 7 hereof.
7. If at any time, LICENSEE should use the Cry1Ab Gene Trademark for
Goods not produced in accordance with the terms of the LICENSE AGREEMENT,
or if at any time LICENSEE breaches any other provision of this Agreement
or fails to observe any of its obligations hereunder the license granted
herein shall be terminable upon written notice from SYNGENTA to that
effect. Provided, however, that LICENSEE shall have ninety (90) days from
the receipt of such notice to cure any breach or default, and all
provisions of the LICENSE AGREEMENT relating to notice of breach, cure and
dispute resolution shall apply to this Cry1Ab GENE TRADEMARK LICENSE
AGREEMENT.
8. To the extent that such reporting would not conflict with other
obligations legally binding on D&PL, LICENSEE agrees to notify SYNGENTA
promptly of any apparent infringement of the Cry1Ab Gene Trademark which
comes to LICENSEE'S knowledge. SYNGENTA will take such action regarding
such infringement as it deems, in its sole discretion, to be necessary or
desirable, and LICENSEE agrees to cooperate therein.
9. SYNGENTA agrees to indemnify and hold LICENSEE harmless from and
against all claims, suits, damages and costs arising out of a claim of
trademark infringement or unfair competition on account of LICENSEE'S use
of the Cry1Ab Gene Trademark. Provided however, that LICENSEE shall
promptly notify SYNGENTA of such claim or suit and shall reasonably
cooperate with SYNGENTA in the defense thereof.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed in duplicate by their duly authorized representatives as of the
date first set forth above.
SYNGENTA PARTICIPATIONS AG
By:
---------------------------------
Title:
------------------------------
DELTA AND PINE LAND COMPANY
By:
---------------------------------
Title:
------------------------------
EXHIBIT C
******
EXHIBIT D
AGRONOMIC CRITERIA FOR DELTAPINE CULTIVARS
Agronomic performance and suitability of each DELTAPINE Cry1Ab CULTIVAR is
the responsibility of D&PL. A new DELTAPINE Cry1Ab CULTIVAR (hereinafter
"new variety") shall be deemed to have met the AGRONOMIC CRITERIA and shall
be approved for commercial release in THE TERRITORY if D&PL confirms in
writing to SYNGENTA that the new variety has been tested for agronomic and
commercial acceptability as to yield, fiber quality, and disease resistance
and, based on such testing, has been found acceptable for commercial
release. D&PL will conduct at least four (4) agronomic trials in THE
TERRITORY in each of two (2) years to determine acceptability. Data from
these and other trials considered relevant by D&PL will be analyzed by D&PL
and used to determine suitability of the new variety for COMMERCIAL SALE.
EXHIBIT E
SEED PURITY STANDARDS
All multiplications of LICENSED COMMERCIAL SEED must meet the genetic
purity standards set forth in this Exhibit E and comply with all applicable
seed laws and regulations of the applicable country in THE TERRITORY.
Breeder or pre-breeder seed lots will be sampled and tested for
verification of the presence of the intended event(s) and the absence of
unintended events. The term "unintended events" shall mean DNA molecules,
vector, or constructs (or replicates thereof) not naturally occurring in
cotton and not intended to be present in the variety according to the bag
label.
Section E.1. PURITY STANDARDS
In the absence of more restrictive applicable government standards,
the SEED PURITY STANDARDS shall be:
(a) At least 98% of the seed in a lot of commercial seed will contain
each GENE intended to be there. For clarity, LICENSED COMMERCIAL SEED which
is intended to contain more than one GENE may be sold only if the testing
indicates that each GENE is present in 98% of the seed. Every seed lot of
LICENSED COMMERCIAL SEED (one seed lot shall not exceed 2,000 UNITS of
seed) must have a sample taken and stored using the procedures set forth in
Section E.2 below, and the presence of the Cry1Ab GENE and each other
intended GENE verified. Verification shall be conducted by D&PL'S testing
laboratory or an independent seed testing laboratory. SYNGENTA shall have
the right to conduct DNA verification on any lot, including the retained
samples, at SYNGENTA'S expense. Any seed samples obtained by SYNGENTA for
DNA verification to check seed purity shall be used for that purpose only
and any residue thereof shall be destroyed.
(b) Adventitious amounts of commercially approved, unintended GENE(S)
are allowed in commercial lots of seed to the extent permitted under
applicable laws. It is D&PL'S responsibility to define acceptable
adventitious amounts based on knowledge of the industry and compliance with
applicable laws, and D&PL shall notify SYNGENTA of its determinations form
time to time and on request. "Commercially approved" means accepted by all
applicable government agencies for sale in the applicable country.
(c) Breeder or pre-breeder seed lots will be tested for non-approved
GENE at a 0.1% threshold at a 95% confidence level. History and knowledge
of the presence of potential non-approved genes in D&PL'S research program
and seed production fields will determine which seed lots are tested for
which non-approved GENES. The testing program and breeding history will be
documented by D&PL. Seed lots testing positive for a non-approved GENE will
not be sold and SYNGENTA will be notified in writing. If the non-approved
GENE is a SYNGENTA-produced gene, the identity of the GENE and the event
will be included in the notification. "Non-approved" means not accepted by
all applicable government agencies for sale in the applicable country.
(d) D&PL shall maintain all testing records for each lot of LICENSED
COMMERCIAL SEED for three years after sale of such LICENSED COMMERCIAL
SEED. All test results, inspection records, and other quality assurance or
quality control documentation shall be reasonably available to SYNGENTA
upon request and SYNGENTA shall have a right to audit D&PL'S quality
control program and to take and test subsamples from the samples retained
by D&PL. Such inspections and evaluations shall be conducted on a
confidential basis by an independent third-party inspector selected by
SYNGENTA and acceptable by D&PL, which inspector shall report to SYNGENTA
and D&PL only whether or not D&PL is in compliance with the SEED PURITY
STANDARD and, if D&PL is not in compliance, the areas of non-compliance
without otherwise disclosing to SYNGENTA D&PL's methods and procedures. Any
such tests and inspections shall be subject to D&PL'S obligations to
owners/licensors of NON-SYNGENTA GENE(S) contained in such LICENSED
COMMERCIAL SEED.
(e) All costs associated with the seed purity verification program
shall be borne by D&PL, except for costs of any testing conducted by
SYNGENTA under Section E.1(a) or audits conducted by SYNGENTA under
Sections E.1(d) or E.2(c).
Section E.2. PROCEDURE FOR ARCHIVING/STORAGE OF SAMPLES OF SEED LOTS
(a) Purpose. This protocol focuses on the collection, storage, and
security of file samples representing processed lots of LICENSED COMMERCIAL
SEED. Storage of said samples is to satisfy applicable legal requirements,
for the development of historical data, and for confirmation and evaluation
in the event of customer inquiries and legal claims and to confirm
SYNGENTA'S and D&PL'S legal rights and/or obligations under the LICENSE
AGREEMENT.
(b) Responsibility
(1) D&PL'S Quality Assurance Department will obtain a
representative sample from every finished seed lot during the conditioning
process. The sample will be taken by the automatic sampling device at the
bagging station (or probed by hand, whichever is appropriate) and divided
into representative portions as per the Association of Official Seed
Analysts Rules for Testing Seeds. The portion for storage will weigh
approximately 1.5 pounds.
(2) These samples will be labeled with lot number, variety,
class, year grown, date, and number of bag per lot, then immediately sealed
in a 4-mil linear low density polyethylene bag that is laminated with
saran-coated 48 gauge polyester or comparable container, to provide a good
moisture barrier.
(3) In order to preserve seed quality, samples will be stored in
either air-conditioned storage, or in dry, arid environments so that seed
quality is reasonably preserved for testing purposes.
(4) Access to these samples will be restricted to individuals
approved by D&PL and will be kept in a physically secure location.
(5) In order to safeguard samples from natural and other
disasters, a portion of every retained sample may be kept in another
location.
(6) These samples will be stored for a period of three (3) years
after the last sale of seed from the lot. If, prior to expiration of this
period, claims or other legal proceedings have been commended which involve
the specific lot, the sample will be retained until a matter is finally
concluded.
(c) SYNGENTA shall have the right to appoint a qualified third party,
reasonably acceptable to D&PL, to conduct a confidential audit of D&PL'S
quality assurance activities to assure trait purity is maintained. The
third party auditor may not disclose D&PL'S methods for quality assurance
but shall report to SYNGENTA whether D&PL is in compliance with the
requirements of this Exhibit E and how they are not in compliance.
EXHIBIT F
PRICING REGIONS IN THE UNITED STATES
REGION STATES COUNTIES
- ------ ------ --------
A Missouri All Counties
Tennessee Benton Houston
Carroll Humphreys
Chester Lake
Crockett Lauderdale
Decatur Madison
Dyer McNary
Fayette Obion
Gibson Perry
Hardeman Shelby
Hardin Stewart
Haywood Tipton
Henderson Weakley
Henry
Northern Arkansas Baxter Lawrence
Benton Logan
Boone Madison
Carroll Marion
Clay Mississippi
Cleburne Newton
Conway Poinsett
Craighead Pope
Crawford Randolph
Crittenden Saint Francis
Cross Searcy
Faulkner Sebastian
Franklin Sharp
Fulton Stone
Greene Van Buren
Independence Washington
Izard White
Jackson Woodruff
Johnson
B Georgia All Counties Except:
Bartow Haralson
Catoosa Murray
Chattooga Paulding
Dade Polk
Floyd Walker
s Gordon Whitfield
Florida All Counties
Southern Alabama Autauga Geneva
Baldwin Greene
Barbour Hale
Bibb Henry
Bullock Houston
Butler Lee
Chambers Lowndes
Chilton Macon
Choctaw Marengo
Clarke Mobile
Coffee Monroe
Conecuh Montgomery
Coosa Perry
Covington Pike
Crenshaw Russell
Dale Sumter
Dallas Tallapoosa
Elmore Washington
Escambia Wilcox
C Mississippi All Counties
Louisiana All Parishes
Southern Arkansas Arkansas Lincoln
Ashley Little River
Bradley Lonoke
Calhoun Miller
Central Monroe
Chicot Montgomery
Clark Nevada
Cleveland Ouachita
Dallas Perry
Desha Phillips
Drew Pike
Garland Polk
Grant Prairie
Hempstead Pulaski
Hot Spring Saline
Howard Scott
Jefferson Sevier
Lafayette Union
Lee Yell
East Texas Bowie Newton
Cass Panola
Harrison Sabine
Marion Shelby
D East Texas Anderson Karnes
Angelina Kaufman
Aransas Kendall
Atascosa Kenedy
Austin Kerr
Bandera Kimble
Bastrop Kinney
Bee Kleberg
Bell Lamar
Bexar Lampasas
Blanco La Salle
Bosque Lavaca
Brazoria Lee
Brazos Leon
Brooks Liberty
Burleson Limestone
Burnet Live Oak
Caldwell McLennan
Calhoun McMullen
Cameron Madison
Camp Mason
Chambers Matagorda
Cherokee Maverick
Clay Medina
Collin Menard
Colorado Milam
Comal Montague
Cooke Montgomery
Coryell Morris
Dallas Nacogdoches
Delta Navarro
Denton Nueces
De Witt Orange
Dimmit Palo Pinto
Duval Parker
Edwards Polk
Ellis Rains
Erath Real
Falls Red River
Fannin Refugio
Fayette Robertson
Fort Bend Rockwall
Franklin Rusk
Freestone San Augustine
Frio San Jacinto
Galveston San Patricio
Gillespie Smith
Goliad Somervell
Gonzales Starr
Grayson Tarrant
Gregg Titus
Grimes Travis
Guadalupe Trinity
Hamilton Tyler
Hardin Upshur
Harris Uvalde
Hays Val Verde
Henderson Van Zandt
Hidalgo Victoria
Hill Walker
Hood Waller
Hopkins Washington
Houston Webb
Hunt Wharton
Jack Willacy
Jackson Williamson
Jasper Wilson
Jefferson Wise
Jim Hogg Wood
Jim Wells Zapata
Johnson Zavala
E Oklahoma All Counties
New Mexico All Counties
West Texas Andrews Jones
Archer Kent
Armstrong King
Bailey Knox
Baylor Lamb
Borden Lipscomb
Brewster Llano
Briscoe Loving
Brown Lubbock
Callahan Lynn
Carson McCulloch
Castro Martin
Childress Midland
Cochran Mills
Coke Mitchell
Coleman Moore
Collingsworth Motley
Comanche Nolan
Concho Ochiltree
Cottle Oldham
Crane Parmer
Crockett Pecos
Crosby Potter
Culberson Presidio
Dallam Randall
Dawson Reagan
Deaf Smith Reeves
Dickens Roberts
Donley Runnels
Eastland San Saba
Ector Schleicher
El Paso Scurry
Fisher Shackelford
Floyd Sherman
Foard Stephens
Gaines Sterling
Garza Stonewall
Glasscock Sutton
Gray Swisher
Hale Taylor
Hall Terrell
Hansford Terry
Hardeman Throckmorton
Hartley Tom Green
Haskell Upton
Hemphill Ward
Hockley Wheeler
Howard Wichita
Hudspeth Wilbarger
Hutchinson Winkler
Irion Yoakum
Jeff Davis Young
F Arizona All Counties
California Imperial San Diego
Riverside San Bernadino
G Northern Alabama Blount Lawrence
Calhoun Limestone
Cherokee Madison
Clay Marion
Cleburne Marshall
Colbert Morgan
Cullman Pickens
De Kalb Randolph
Etowah Saint Clair
Fayette Shelby
Franklin Talladega
Jackson Tuscaloosa
Jefferson Walker
Lamar Winston
Lauderdale
Northwest Georgia Bartow Haralson
Catoosa Murray
Chattooga Paulding
Dade Polk
Floyd Walker
Gordon Whitfield
Middle Tennessee Bedford Lawrence
Coffee Lincoln
Franklin Moore
Giles Wayne
H San Joaquin/
Sacramento Valley
California All Counties Except:
Imperial San Diego
Riverside San Bernadino
I Virginia All Counties
North Carolina All Counties
South Carolina All Counties
EXHIBIT G
SCHEDULE OF PAYMENTS UNDER SUBSECTION 10.2(d)
Date of D&PL'S Notice of Termination SYNGENTA'S Payment to D&PL
Under Subsection 10.2(d) (in United States Dollars)
From and after payment of initial
installment of LICENSE PURCHASE PRICE
due on EFFECTIVE DATE to
payment of 2nd installment of
LICENSE PURCHASE PRICE
due on July 15, 2005: US$3,500,000
From and after payment of 2nd
installment of LICENSE PURCHASE PRICE
due on July 15, 2005, to
payment of 3rd installment of
LICENSE PURCHASE PRICE
due on October 15, 2005: US$4,375,000
From and after payment of 3rd
installment of LICENSE PURCHASE PRICE
due on October 15, 2005, to
payment of 4th installment of
LICENSE PURCHASE PRICE
due on July 15, 2006: US$5,250,000
From and after payment of 4th
installment of LICENSE PURCHASE PRICE
due on July 15, 2006, to
payment of 5th installment of
LICENSE PURCHASE PRICE
due on October 15, 2006: US$6,125,000
From and after payment of 5th
installment of LICENSE PURCHASE PRICE
due on October 15, 2006: US$7,000,000
EXHIBIT H
CERTAIN HERBICIDE TOLERANCE GENE(S)
The HERBICIDE TOLERANCE GENE referred to in this clause shall be a
HERBICIDE TOLERANCE GENE owned or controlled by MONSANTO.
EXHIBIT I
******
EXHIBIT J
PERFORMANCE REQUIREMENTS
2.1.9 The term "COMMITMENT DATE" shall mean the date that is forty-two
(42) months after the EFFECTIVE DATE.
2.1.17 The term "D&PL PERFORMANCE REQUIREMENT" shall mean that, for
any period of three (3) consecutive years in the period beginning from and
after, and inclusive of, the year in which D&PL achieves the element of
INSECT RESISTANCE MARKET PENETRATION set forth in Subsection 2.1.36(c), the
arithmetic average of the annual percentages of UNITS of cottonseed sold by
D&PL in the United States of America that contain a Cry1Ab GENE and/or a
NON-Cry1Ab SYNGENTA LEPIDOPTERAN-ACTIVE GENE(S) out of the total number of
UNITS of cottonseed sold by D&PL in the United States of America that
contain any LEPIDOPTERAN-ACTIVE GENE is not less than forty-five percent
(45%); provided that, in no one of such years, the percentage of UNITS of
cottonseed that contain a Cry1Ab GENE and/or a NON-Cry1Ab SYNGENTA
LEPIDOPTERAN-ACTIVE GENE(S) out of the total number of UNITS of cottonseed
sold by D&PL in the United States of America that contain any
LEPIDOPTERAN-ACTIVE GENE is less than forty percent (40%).
2.1.36 The term "INSECT RESISTANCE MARKET PENETRATION" means that each
of the following milestones in Subparts (b) and (c) below will be achieved
on the dates provided therein:
(a) [Intentionally omitted]
(b) D&PL shall have available an inventory of LICENSED COMMERCIAL
SEED for sale in the United States of America which meets the warranties
set forth in Section 11.2 of this LICENSE AGREEMENT and contains the Cry1Ab
GENE stacked in combination with a NON-Cry1Ab SYNGENTA LEPIDOPTERAN-ACTIVE
GENE and a HERBICIDE TOLERANCE GENE of not less than 300,000 UNITS by
February 28 of the second calendar year after Date R2, and
(c) Either (1) not less than forty percent (40%) of the UNITS of
cottonseed containing a LEPIDOPTERAN-ACTIVE GENE sold by D&PL in the United
States of America in the year ending December 31 of the fourth calendar
year after Date R2 shall contain the Cry1Ab GENE and/or a NON-Cry1Ab
SYNGENTA LEPIDOPTERAN-ACTIVE GENE(S) or (2) D&PL shall have available an
inventory of LICENSED COMMERCIAL SEED for sale in the United States of
America which meets the warranties set forth in Section 11.2 of this
LICENSE AGREEMENT and contains the Cry1Ab GENE stacked in combination with
a NON-Cry1Ab SYNGENTA LEPIDOPTERAN-ACTIVE GENE and a HERBICIDE TOLERANCE
GENE of not less than 1,200,000 UNITS by February 28 of the fourth calendar
year after Date R2;
where, in the case of each of Subparts (b) and (c):
(i) [Intentionally omitted]
(ii) "Date R2" means (A) February 28 of the calendar year
during which GOVERNMENT APPROVAL of both a Cry1Ab GENE EVENT and an event
containing the NON-Cry1Ab SYNGENTA LEPIDOPTERAN-ACTIVE GENE (other than a
VIP3A GENE EVENT in the COT 100 Series) and, if required, the combination
of that same Cry1Ab GENE EVENT and the NON-Cry1Ab SYNGENTA LEPIDOPTERAN
ACTIVE GENE and a HERBICIDE TOLERANCE GENE, has been obtained in the United
States of America on or before February 28 of that year or (B) if such
GOVERNMENT APPROVAL is not obtained by February 28 of the year in which it
is obtained, Date R2 shall mean February 28 of the calendar year following
the year in which such GOVERNMENT APPROVAL is obtained; provided that Date
R2 cannot be earlier than the later of (w) January 1, 2009, or (x)
fifty-eight (58) months after SYNGENTA delivers to D&PL at a place in the
United States of America designated by D&PL not less than twenty-five (25)
viable cottonseed containing the Cry1Ab GENE embodied in the specific gene
event with respect to which the GOVERNMENT APPROVAL described in Clause (A)
of this Subpart (ii) is obtained, together with testing materials capable
of accurately identifying the presence of such Cry1Ab GENE or (y)
twenty-four (24) months after approval for seed increase of DELTAPINE
Cry1Ab CULTIVARS containing that same Cry1Ab GENE EVENT stacked in
combination with the NON-Cry1Ab SYNGENTA LEPIDOPTERAN-ACTIVE GENE and a
HERBICIDE TOLERANCE GENE is issued by the government of Costa Rica (or
another country reasonably accepted by D&PL as an equivalent winter nursery
country), which approval both by SYNGENTA and D&PL shall use commercially
reasonable efforts to obtain at the earliest practical date and, with
respect to SYNGENTA, in accordance with Subsection 3.6, or (z) twelve (12)
months after issuance of all approvals necessary for increase and
COMMERCIAL SALE, in the United States of America, of unlimited quantities
of LICENSED COMMERCIAL SEED containing that same Cry1Ab GENE EVENT stacked
in combination with the NON-Cry1Ab SYNGENTA LEPIDOPTERAN-ACTIVE GENE EVENT
and a HERBICIDE TOLERANCE GENE, which approvals both SYNGENTA and D&PL
shall use commercially reasonable efforts to obtain at the earliest
practical date and, with respect to SYNGENTA, in accordance with Subsection
3.6, and provided, further, that the twenty-four (24) months immediately
preceding Date R2 and from Date R2 to the date stated in Subsection
2.1.36(b) and/or 2.1.36(c), as applicable, shall be extended by the period
of time, if any, during such period D&PL is subject to a "BLOCKING ORDER"
or any other outstanding order of any administrative agency or court of
competent jurisdiction which is binding on SYNGENTA and/or D&PL and which
enjoins or prohibits D&PL'S development and multiplication of LICENSED
COMMERCIAL SEED of such DELTAPINE Cry1Ab CULTIVARS in the United States of
America, which order is not stayed, vacated or overturned within ninety
(90) days of its entry.
Failure to achieve any milestone stated in Subsection 2.1.36(b)
or (c) by the applicable date set forth above shall mean that INSECT
RESISTANCE MARKET PENETRATION has not been achieved effective as of such
date or year, as applicable, unless an extension of time is expressly
granted by SYNGENTA to D&PL in writing.
2.1.37 The term "INSECT RESISTANCE MARKET PENETRATION COMMITMENT"
means D&PL'S commitment by notice to SYNGENTA that D&PL will achieve INSECT
RESISTANCE MARKET PENETRATION on the terms and conditions and by the dates
specified in the definition thereof.
3.5 (c) The provisions of Subsection 3.5(a) notwithstanding,
(i) SYNGENTA retains the right at its sole discretion to
grant licenses to MONSANTO under the LICENSED PATENT RIGHTS and SYNGENTA
TECHNOLOGY to test, develop, produce, have produced, multiply, and sell in
the United States of America (directly or through third party distributors
and dealers by sublicense or otherwise) cottonseed containing the Cry1Ab
GENE, alone or in combination with other GENE(S), in any germplasm and
cotton cultivars. Such license granted to MONSANTO may also include, at
SYNGENTA'S sole discretion, any rights that are also provided to D&PL under
Subsections 3.1, 3.2 and/or 3.3. D&PL shall receive seventy percent (70%)
of the NET TECHNOLOGY FEE REVENUE and other consideration received by
SYNGENTA from such licensing to MONSANTO and SYNGENTA shall receive thirty
percent (30%) thereof, provided that, SYNGENTA shall neither contract for
nor accept non-monetary consideration from MONSANTO for licenses to the
Cry1Ab GENE and/or any or all of the LICENSED PATENT RIGHTS for use in
cotton, without D&PL's consent. Consideration received by SYNGENTA in any
transaction or under any agreement with MONSANTO shall not be deemed to be
non-monetary consideration from MONSANTO for licenses to the Cry1Ab GENE
and/or LICENSED PATENT RIGHTS for use in cotton if (A) SYNGENTA certifies
to D&PL in writing that the consideration was not in exchange, in whole or
in part, for any grant to MONSANTO of a license(s) to the Cry1Ab GENE for
use in cotton and/or any or all of the LICENSED PATENT RIGHTS for use in
cotton with the Cry1Ab GENE, (B) the agreement or other documents executed
in connection with the transaction do not recite or reflect that
consideration has been or is being is given by MONSANTO for any license to
the Cry1Ab GENE for use in cotton and/or any or all of the LICENSED PATENT
RIGHTS for use in cotton with the Cry1Ab GENE, and (C) such transaction or
agreement is not entered into nor does it become effective within a period
beginning twelve (12) months before and ending twelve (12) months after the
date on which SYNGENTA and MONSANTO have entered in any agreement pursuant
to which SYNGENTA has granted or caused to be granted to MONSANTO and/or
any party(ies) designated by MONSANTO any license (or option to license) to
the Cry1Ab GENE for use in cotton and/or any or all of the LICENSED PATENT
RIGHTS for use in cotton with the Cry1Ab GENE. The failure to follow or to
meet the provisions set forth in the preceding sentence shall not be
construed to mean that consideration received by SYNGENTA in any
transaction or under any agreement with MONSANTO is necessarily
non-monetary consideration from MONSANTO for licenses to the Cry1Ab GENE
for use in cotton and/or any and all of the LICENSED PATENT RIGHTS for use
in cotton with the Cry1Ab GENE. In the event that D&PL consents to
SYNGENTA'S receiving non-monetary consideration from MONSANTO for a
license(s) to the Cry1Ab GENE for use in cotton and/or related LICENSED
PATENT RIGHTS for use in cotton with the Cry1Ab GENE, D&PL shall receive
seventy percent (70%) of the fair market value of such non-monetary
consideration and seventy percent (70%) of NET TECHNOLOGY FEE REVENUE on
MONSANTO'S sales of LICENSED COMMERCIAL SEED (fair market value being
measured as the value of such non-monetary consideration to SYNGENTA and
net of the fair market value of any consideration paid by SYNGENTA to
MONSANTO in exchange other than the license to the Cry1Ab GENE for use in
cotton and/or any or all of the LICENSED PATENT RIGHTS for use in cotton
with the Cry1Ab GENE). For marketing seasons after the occurrence of
SYNGENTA'S licensing MONSANTO, as permitted under this Subsection
3.5(c)(i), so long as D&PL or its corporate successor is selling LICENSED
COMMERCIAL SEED in a particular PRICING REGION in the United States of
America, (1) all cotton growers purchasing or using LICENSED COMMERCIAL
SEED in such PRICING REGION in the United States of America shall be
required to pay a TECHNOLOGY FEE and (2) SYNGENTA shall establish
TECHNOLOGY FEES for rights to use the Cry1Ab GENE embodied in LICENSED
COMMERCIAL SEED sold by MONSANTO in accordance with the principles for
establishing TECHNOLOGY FEES set forth in Subsection 6.1(c), provided,
however, that the procedures set forth in Subsection 6.1(d) shall not apply
to establishing TECHNOLOGY FEES for rights to use the Cry1Ab GENE embodied
in LICENSED COMMERCIAL SEED sold by MONSANTO. D&PL shall have the right to
elect, at its option for each marketing season, whether cotton growers in
each particular PRICING REGION in the United States of America purchasing
or using LICENSED COMMERCIAL SEED sold by D&PL shall be required to pay (1)
the TECHNOLOGY FEE established by SYNGENTA (as provided above) for cotton
growers in that PRICING REGION purchasing or using LICENSED COMMERCIAL SEED
sold by MONSANTO or (2) the TECHNOLOGY FEE established in accordance with
Subsections 6.1(c) and 6.1(d) for cotton growers in that PRICING REGION
purchasing or using LICENSED COMMERCIAL SEED sold by D&PL. SYNGENTA shall
notify D&PL of such TECHNOLOGY FEES for each PRICING REGION in the United
States of America applicable with respect to LICENSED COMMERCIAL SEED sold
by MONSANTO not later than ten (10) business days after such TECHNOLOGY
FEES are set for the next marketing season. D&PL shall notify SYNGENTA of
its election within twenty (20) business days after the later of (1) the
date on which D&PL receives SYNGENTA'S notice with respect to TECHNOLOGY
FEE on MONSANTO'S sales of LICENSED COMMERCIAL SEED in that PRICING REGION
or (2) the date on which the TECHNOLOGY FEE on D&PL'S sales of LICENSED
COMMERCIAL SEED in that PRICING REGION is established under Subsection
6.1(d) for that PRICING REGION.
(ii) In the event that (A) a MONSANTO/D&PL CHANGE OF CONTROL
TRANSACTION occurs or (B) on or before the COMMITMENT DATE, D&PL does not
give SYNGENTA notice that it commits to achieve the INSECT RESISTANCE
MARKET PENETRATION COMMITMENT under this LICENSE AGREEMENT and/or under the
RELATED AGREEMENT for the license of a NON-Cry1Ab SYNGENTA
LEPIDOPTERAN-ACTIVE GENE or (C) on or before the COMMITMENT DATE, D&PL
gives SYNGENTA notice of the INSECT RESISTANCE MARKET PENETRATION
COMMITMENT under this LICENSE AGREEMENT and under the RELATED AGREEMENT for
the license of a NON-Cry1Ab SYNGENTA LEPIDOPTERAN-ACTIVE GENE but D&PL does
not achieve such INSECT RESISTANCE MARKET PENETRATION under this LICENSE
AGREEMENT and/or under the RELATED AGREEMENT for the license of a
NON-Cry1Ab SYNGENTA LEPIDOPTERAN-ACTIVE GENE by any one or more of the
deadline(s) applicable for achieving such INSECT RESISTANCE MARKET
PENETRATION or (D) D&PL achieves such INSECT RESISTANCE MARKET PENETRATION
by the applicable deadlines, but thereafter, does not maintain the D&PL
PERFORMANCE REQUIREMENT under this LICENSE AGREEMENT and/or under the
RELATED AGREEMENT for the license of a NON-Cry1Ab SYNGENTA
LEPIDOPTERAN-ACTIVE GENE or (E) SYNGENTA gives to notice to D&PL in
accordance with Section 10.2(d), then SYNGENTA shall have the right to
test, develop, produce, have produced, multiply, and sell cotton seed
containing the Cry1Ab GENE, alone or in combination with other GENE(S), in
any germplasm and cotton cultivars selected by SYNGENTA and to grant
licenses under the LICENSED PATENT RIGHTS and SYNGENTA TECHNOLOGY to any
third party to develop, produce, have produced, multiply, and sell cotton
seed containing the Cry1Ab GENE in any germplasm that such third party has
a right to use for such purpose (provided that SYNGENTA and any such third
party shall not use for this purpose any DELTAPINE CULTIVAR or SUBLICENSEE
CULTIVAR unless such cultivar is licensed to SYNGENTA or such third party
for such purpose).
For marketing seasons after the occurrence of any such event, so
long as D&PL or its corporate successor is selling LICENSED COMMERCIAL SEED
in a particular PRICING REGION in the United States of America, (1) all
cotton growers purchasing LICENSED COMMERCIAL SEED in such PRICING REGION
shall be required to pay a TECHNOLOGY FEE and (2) SYNGENTA shall establish
the TECHNOLOGY FEES for rights to use the Cry1Ab GENE embodied in LICENSED
COMMERCIAL SEED sold by SYNGENTA and/or by any third party in accordance
with the principles for establishing TECHNOLOGY FEES set forth in
Subsection 6.1(c), provided, however, that the procedures set forth in
Subsection 6.1(d) shall not apply. D&PL shall have the right to elect, at
its option for each marketing season, whether cotton growers in each
particular PRICING REGION in the United States of America purchasing or
using LICENSED COMMERCIAL SEED sold by D&PL shall be required to pay (1)
the TECHNOLOGY FEE established by SYNGENTA for cotton growers in that
PRICING REGION purchasing or using LICENSED COMMERCIAL SEED sold by
SYNGENTA or sold by any of the other licensees from SYNGENTA or (2) the
TECHNOLOGY FEE established in accordance with Subsections 6.1(c) and 6.1(d)
for cotton growers in that PRICING REGION purchasing or using LICENSED
COMMERCIAL SEED sold by D&PL. SYNGENTA shall notify D&PL of the TECHNOLOGY
FEES for each PRICING REGION applicable with respect to LICENSED COMMERCIAL
SEED sold by SYNGENTA and/or each other licensee from SYNGENTA not later
than ten (10) business days after such TECHNOLOGY FEES are set for the next
marketing season. D&PL shall notify SYNGENTA of its election with respect
to a particular PRICING REGION within twenty (20) days after the later of
(1) the date on which D&PL receives SYNGENTA'S notice with respect to such
TECHNOLOGY FEES for that PRICING REGION or (2) the date on which the
TECHNOLOGY FEE on D&PL'S sales of LICENSED COMMERCIAL SEED in that PRICING
REGION is established under Subsection 6.1(d). With respect to any PRICING
REGION outside the United States of America, so long as D&PL or its
corporate successor is selling LICENSED COMMERCIAL SEED, all cotton growers
purchasing or using cottonseed containing the Cry1Ab GENE whether sold by
SYNGENTA or by any of the other licensees from SYNGENTA or by D&PL and its
sublicensees shall be required to pay the TECHNOLOGY FEES for the subject
PRICING REGION established in accordance with Subsections 6.1(c) and
6.1(d), provided that, in the event this procedure violates the local law
in any particular country, TECHNOLOGY FEES in that country shall be
established using the procedures provided in this paragraph with respect to
the United States of America.
After the occurrence of one or more of the events described in
Subsections 3.5(c)(ii)(A), (B), (C) or (E), SYNGENTA shall retain one
hundred percent (100%) of the NET TECHNOLOGY FEE REVENUE from SYNGENTA'S
licensing of cotton growers to use the Cry1Ab GENE in cotton planting seed
and/or NET TECHNOLOGY FEE REVENUE and/or other consideration received by
SYNGENTA from licensing of third party seed companies to use the Cry1Ab
GENE. After the occurrence of the event described in Subsection
3.5(c)(ii)(D), after deduction of any TECHNOLOGY FEES or other amounts due
to or retained by SYNGENTA'S third party seed company licensees, D&PL shall
receive fifty percent (50%) of the remaining NET TECHNOLOGY FEE REVENUE or
other consideration received by SYNGENTA from the licensing of cotton
growers to use Cry1Ab GENE in cotton planting seed and/or NET TECHNOLOGY
FEE REVENUE and/or other consideration received by SYNGENTA from licensing
of third party seed companies to use the Cry1Ab GENE and SYNGENTA shall
retain fifty percent (50%). The reductions in D&PL'S share of NET
TECHNOLOGY FEE REVENUE set forth in this paragraph of Subsection 3.5(c)(ii)
(and, in cases where applicable, the provisions of Subsection 10.2) and the
other terms and conditions set forth in this LICENSE AGREEMENT shall be
SYNGENTA'S exclusive remedies in the event that any one or more of the
events described in Subsection 3.5(c)(ii)(A), (B), (C), (D) or (E) occur,
except for claims based on fraud, intentional misrepresentation or gross
negligence by D&PL.
6.1 (c) Principles for Establishing TECHNOLOGY FEES. The TECHNOLOGY
FEE and the COMPETITIVE TECHNOLOGY FEE ADJUSTMENTS for each Cry1Ab GENE
EVENT for each PRICING REGION in which LICENSED COMMERCIAL SEED containing
such Cry1Ab GENE EVENT is to be sold in the United States and for each
country outside the United States in which LICENSED COMMERCIAL SEED
containing such Cry1Ab GENE EVENT is to be sold will be based on the
following principles:
(i) The TECHNOLOGY FEE shall permit the subject Cry1Ab GENE
EVENT to be marketed to cotton growers on a competitive basis with other
technologies for control of LEPIDOPTERAN INSECTS then available to cotton
farmers in the subject PRICING REGION (whether collected as a royalty,
grower license fee, seed premium, or other mode of value capture).
(ii) The TECHNOLOGY FEE should bear a reasonable
relationship to the identifiable alternate insect control costs (such as
the cost of insecticides, labor, equipment and fuel and/or alternative
transgenic technologies) displaced by the use of the Cry1Ab GENE.
(iii) The TECHNOLOGY FEE shall be set based on the value of
the Cry1Ab GENE EVENT and not on the potential revenues from sales of seed,
chemicals or other products or services.
EXHIBIT K
PROVISIONS RELATED TO MONSANTO
ITEM 1 [from Subsection 2.1.1]:
(b) until and unless a MONSANTO/D&PL CHANGE OF CONTROL TRANSACTION
occurs, neither MONSANTO nor any AFFILIATE of MONSANTO nor any entity in
which MONSANTO or any AFFILIATE of MONSANTO owns an equity interest shall
be considered an AFFILIATE of DELTA AND PINE LAND COMPANY
ITEM 2 [from Subsections 2.1.44 to 2.1.49]:
2.1.48 The term "MONSANTO" means Monsanto Company, a company
incorporated in the State of Delaware, U.S.A., having a place of business
at 800 North Lindbergh Boulevard, St. Louis, Missouri 63162, or any
corporate successor and/or AFFILIATES of Monsanto Company.
2.1.49 The term "MONSANTO/D&PL CHANGE OF CONTROL TERMINATION PAYMENT"
means an amount of money equal to the installments of the LICENSE PURCHASE
PRICE due to become payable under the LICENSE ACQUISITION AGREEMENT over
the period of eighteen (18) months from and after the event giving rise to
the obligation of D&PL or its successor to make such MONSANTO/D&PL CHANGE
OF CONTROL TERMINATION PAYMENT under Subsection 10.2(b)(ii) and an amount
equal to 100% of the reasonable costs to which SYNGENTA is entitled to
reimbursement pursuant to Subsection 4.3(h), Subparts (i) through (iv),
that have been incurred or cannot reasonably be avoided as of the date of
SYNGENTA'S receipt of D&PL'S notice under Subsection 10.2(b)(ii).
2.1.50 The term "MONSANTO/D&PL CHANGE OF CONTROL TRANSACTION" means
any transaction or related series of transactions including, but not
limited to, a reorganization, restructuring, consolidation, stock purchase,
merger or acquisition or transfer of substantially all the equity or assets
of D&PL, by which MONSANTO acquires CONTROL of D&PL or acquires all or
substantially all of D&PL's assets, or by which D&PL acquires CONTROL of
MONSANTO or acquires all or substantially all of MONSANTO'S assets.
2.1.51 The term "MONSANTO/D&PL CHANGE OF CONTROL TRANSACTION FEE"
shall mean Fifty Million United States Dollars (US $50,000,000).
2.1.52 The term "MONSANTO/SYNGENTA CHANGE OF CONTROL TRANSACTION"
means any transaction or related series of transactions including, but not
limited to, a reorganization, restructuring, consolidation, stock purchase,
merger or acquisition or transfer of all or substantially all the equity or
assets of SYNGENTA by which MONSANTO acquires CONTROL of SYNGENTA or
acquires all or substantially all of SYNGENTA's assets, or by which
SYNGENTA acquires CONTROL of MONSANTO or acquires all or substantially all
of MONSANTO's assets.
2.1.53 The term "MONSANTO/SYNGENTA CHANGE OF CONTROL TRANSACTION FEE"
shall mean Fifty Million United States Dollars (US $50,000,000).
ITEM 3 [from Subsection 3.4]:
The foregoing notwithstanding, unless and until a MONSANTO/D&PL CHANGE
OF CONTROL TRANSACTION occurs, D&PL shall not grant a sublicense to
MONSANTO or an AFFILIATE of MONSANTO or any entity in which MONSANTO or an
AFFILIATE of MONSANTO owns an equity interest.
ITEM 4 [from Subsection 3.5 (b)]:
as to licenses to MONSANTO as provided in Subsection 3.5(c)(i)
ITEM 5 [from Subsection 3.6 (a)]:
provided that D&PL shall not incorporate in LICENSED COMMERCIAL SEED
any LEPIDOPTERAN-ACTIVE GENE events licensed to D&PL, directly or
indirectly, by MONSANTO without SYNGENTA'S prior written consent (which
consent shall not be withheld if SYNGENTA has licensed MONSANTO under
Subsection 3.5(c)(i) and has permitted MONSANTO to stack the same
LEPIDOPTERAN-ACTIVE GENE events with the Cry1Ab GENE).
ITEM 6 [from Subsection 3.7 (e)]:
MONSANTO
ITEM 7 [from Subsection 4.3 (c)]:
If SYNGENTA licenses MONSANTO under Section 3.5(c)(i) or if an event
set forth in Subsection 3.5(c)(ii) occurs, the expenses of obtaining and
maintaining such GOVERNMENT APPROVAL in the United States of America in
each year beginning with the later of (i) the earlier of year in which
SYNGENTA licenses MONSANTO under Section 3.5(c)(i) or the year in which the
event set forth in Subsection 3.5(c)(ii) occurs or (ii) six and one half
(6.5) years from the EFFECTIVE DATE, D&PL shall bear the amount of such
expenses incurred in each twelve (12) month period ending August 31,
determined by multiplying the total of such expenses in that period by a
fraction the numerator of which is the aggregate amount of revenue received
and retained by D&PL in the subject period from (a) TECHNOLOGY FEES on
D&PL'S sales of LICENSED COMMERCIAL SEED in the United States of America
and (b) TECHNOLOGY FEES on sales of LICENSED COMMERCIAL SEED by MONSANTO
and/or SYNGENTA and/or other SYNGENTA licensees in the United States of
America and the denominator of which is the aggregate amount of revenue
received and retained by D&PL and SYNGENTA, collectively, from TECHNOLOGY
FEES on all sales of LICENSED COMMERCIAL SEED in the United States of
America in the subject period, and SYNGENTA shall bear the remainder of
such expenses.
ITEM 8 [from Subsection 6.1 (a)]:
If SYNGENTA exercises its right to license MONSANTO under Subsection
3.5(c)(i) and/or its right to sell or to license third parties to sell
LICENSED COMMERCIAL SEED in the event of occurrences described in
Subsection 3.5(c)(ii), then (A) with respect to the United States of
America, SYNGENTA shall determine the mode of collection of the TECHNOLOGY
FEES for the right to use the Cry1Ab GENE in LICENSED COMMERCIAL SEED sold
by MONSANTO or by SYNGENTA or its other licensees in its sole discretion,
provided that so long as D&PL or its corporate successor is selling
LICENSED COMMERCIAL SEED in the United States of America, SYNGENTA shall
not change the mode of collection of TECHNOLOGY FEES for the right to use
the Cry1Ab GENE in LICENSED COMMERCIAL SEED sold by D&PL or its
sublicensees that was in place in each PRICING REGION in the United States
of America on the date of the occurrence of the event giving rise to
application of Subsection 3.5(c)(i) and/or Subsection 3.5(c)(ii) without
written consent of D&PL, and provided, further, D&PL may at its sole
discretion elect to adopt as the mode of collection of TECHNOLOGY FEES for
the right to use the Cry1Ab GENE in LICENSED COMMERCIAL SEED sold by D&PL
or its sublicensees to any mode of collection of TECHNOLOGY FEES in effect
in the same PRICING REGION in the United States of America with respect to
TECHNOLOGY FEES for the right to use the Cry1Ab GENE in seed sold by
MONSANTO or by SYNGENTA or its other licensees, and (B) with respect to
each country outside the United States of America, SYNGENTA shall not
change the mode of collection of TECHNOLOGY FEES for rights to use the
Cry1Ab GENE in LICENSED COMMERCIAL SEED sold by D&PL or its sublicensees
that was in place in that country on the date of occurrence of the event
giving rise to application of Subsection 3.5(c)(ii) without the written
consent of D&PL and shall require the same mode of collection of TECHNOLOGY
FEES for rights to use the Cry1Ab GENE in LICENSED COMMERCIAL SEED sold by
SYNGENTA or its other licensees in the subject country, provided that, in
the event this procedure violates the local law of a particular country,
the mode of collection of TECHNOLOGY FEES in that country shall be
determined as provided in this Subsection 6.1(a) with respect in the United
States of America.
ITEM 9 [from Subsection 6.1 (d)]:
(provided that the procedure set out in this Subsection 6.1(d) shall
not apply to establish the TECHNOLOGY FEE for use of the Cry1Ab GENE in
LICENSED COMMERCIAL SEED sold by MONSANTO in the United States of America
if SYNGENTA exercises its right to license MONSANTO under Subsection
3.5(c)(i) or to establishment of the TECHNOLOGY FEES for use of the Cry1Ab
GENE in LICENSED COMMERCIAL SEED sold by SYNGENTA or by other licensees of
SYNGENTA in the United States of America if SYNGENTA exercises its right to
sell or to license third parties to sell LICENSED COMMERCIAL SEED in the
event of occurrences described in Subsection 3.5(c)(ii) of this LICENSE
AGREEMENT)
ITEM 10 [from Subsection 11.2 (b)]:
(b) As of the EFFECTIVE DATE, D&PL has the right under the Roundup Ready(R)
Gene License and Seed Services Agreement among Monsanto Company, D&M
Partners, and Delta and Pine Land Company, dated as of February 2, 1996,
amended as of July 26, 1996, and December 8, 1999, and clarified as of
January 2, 2000, and further amended as of March 26, 2003 (the "Roundup
Ready(R) Gene License and Seed Services Agreement"), to insert the Cry1Ab
GENE in DELTAPINE CULTIVARS embodying MONSANTO'S Roundup Ready(R) Gene and
related MONSANTO technology, subject to the terms and conditions of the
Roundup Ready(R) Gene License and Seed Services Agreement and specifically
subject to the terms of Section 3.6(a) of said agreement, as amended on
December 8, 1999. D&PL warrants that it will not stack any NON-SYNGENTA
GENE in combination with a SYNGENTA GENE as to which D&PL does not have
full right and authority from the owner or licensor of the NON-SYNGENTA
GENE to so stack.
ITEM 11 [from Subsection 14.2 (b)]:
(b) In the event of a MONSANTO/SYNGENTA CHANGE OF CONTROL TRANSACTION,
the following events shall occur:
(i) SYNGENTA shall pay to D&PL the MONSANTO/SYNGENTA CHANGE OF
CONTROL TRANSACTION FEE within thirty (30) days after closing of the
MONSANTO/SYNGENTA CHANGE OF CONTROL TRANSACTION, provided that SYNGENTA or
its successor shall be obligated to pay D&PL only one MONSANTO/SYNGENTA
CHANGE OF CONTROL TRANSACTION FEE under this LICENSE AGREEMENT and/or any
of the RELATED AGREEMENTS.
(ii) D&PL shall have the option, exercised by notice given within
thirty (30) days after the later of (x) the closing of a MONSANTO/SYNGENTA
CHANGE OF CONTROL TRANSACTION or (y) the closing of any divestiture of
SYNGENTA'S rights to the Cry1Ab GENE or other assets related to SYNGENTA'S
performance of this LICENSE AGREEMENT or any of the RELATED AGREEMENTS,
pursuant to agreement of SYNGENTA and MONSANTO and/or as required by
regulatory authorities as a condition to closing of a MONSANTO/SYNGENTA
CHANGE OF CONTROL TRANSACTION, either
(A) to continue this LICENSE AGREEMENT in full force and
effect under the same terms and conditions, provided that thereafter (1)
D&PL shall be responsible for making all decisions previously made by the
LICENSE MANAGEMENT COMMITTEE, which decision-making shall be exercised by
D&PL in good faith and in a commercially reasonable manner, and (2) D&PL
may assume responsibility at its expense for obtaining GOVERNMENT APPROVAL
for Cry1Ab GENE EVENTS in the United States of America and for controlling
defense of patent infringement claims and SYNGENTA and/or its successor
will, upon request, provide commercially reasonable assistance to D&PL with
obtaining such GOVERNMENT APPROVAL in the United States of America and with
defense of patent infringement claims, and (3) neither SYNGENTA nor
MONSANTO or their respective AFFILIATES will assert any claims under
patents that are issued on (or that thereafter issue from any patent
application pending on) the date of closing of the MONSANTO/SYNGENTA CHANGE
OF CONTROL TRANSACTION to enjoin or restrict sale of LICENSED COMMERCIAL
SEED by D&PL or its sublicensees, or
(B) to terminate this LICENSE AGREEMENT, in which event
SYNGENTA shall refund to D&PL, within thirty (30) days after receipt of
D&PL'S notice of its exercise of this option, all of the LICENSE PURCHASE
PRICE paid by D&PL and D&PL and/or its sublicensees shall have the right
for a period of three (3) years from and after the date of termination to
sell LICENSED COMMERCIAL SEED then in their possession or which they are
then obligated by contract to take delivery. D&PL and SYNGENTA shall each
receive the portions of NET TECHNOLOGY FEE REVENUE related to such sales of
LICENSED COMMERCIAL SEED as provided in Section 6.2.
EXHIBIT L
TERMINATION
10.2 TERMINATION.
(a) In the event that on or before the COMMITMENT DATE, D&PL does
not give SYNGENTA notice that it commits to achieve the INSECT RESISTANCE
MARKET PENETRATION COMMITMENT under this LICENSE AGREEMENT and/or under the
RELATED AGREEMENT for the license of a NON-Cry1Ab SYNGENTA
LEPIDOPTERAN-ACTIVE GENE, (i) this LICENSE AGREEMENT shall terminate as of
the COMMITMENT DATE (except with respect to any Cry1Ab GENE EVENT for which
GOVERNMENT APPROVAL in the United States of America has been obtained as of
the COMMITMENT DATE) and (ii) D&PL shall have no obligation to pay SYNGENTA
further installments of the LICENSE PURCHASE PRICE with respect to this
LICENSE AGREEMENT to become due after the COMMITMENT DATE and (iii)
SYNGENTA shall pay D&PL within thirty (30) days after the COMMITMENT DATE
the sum of Seven Million United States Dollars (US$7,000,000) with respect
to this LICENSE AGREEMENT. In the event that on or before the COMMITMENT
DATE, D&PL gives SYNGENTA notice of the INSECT RESISTANCE MARKET
PENETRATION COMMITMENT under this LICENSE AGREEMENT and/or under the
RELATED AGREEMENT for the license of a NON-Cry1Ab SYNGENTA
LEPIDOPTERAN-ACTIVE GENE but D&PL does not achieve such INSECT RESISTANCE
MARKET PENETRATION under this LICENSE AGREEMENT and/or under the RELATED
AGREEMENT for the license of a NON-Cry1Ab SYNGENTA LEPIDOPTERAN-ACTIVE GENE
by any one or more of the deadline(s) applicable for achieving such INSECT
RESISTANCE MARKET PENETRATION, this LICENSE AGREEMENT shall terminate as of
the date of applicable deadline which D&PL fails to achieve (except with
respect to any Cry1Ab GENE EVENT for which GOVERNMENT APPROVAL in the
United States of America has been obtained as of such date). If this
LICENSE AGREEMENT terminates under this Subsection 10.2(a), SYNGENTA shall
have the rights specified in Subsection 3.5(c)(ii) with respect to all
Cry1Ab GENE EVENTS.
(b) In the event of a MONSANTO/D&PL CHANGE OF CONTROL
TRANSACTION, D&PL or its successor shall pay SYNGENTA the MONSANTO CHANGE
OF CONTROL TRANSACTION FEE within thirty (30) days after the closing of the
MONSANTO/D&PL CHANGE OF CONTROL TRANSACTION, provided that D&PL or its
successor shall be obligated to pay SYNGENTA only one MONSANTO/D&PL CHANGE
OF CONTROL TRANSACTION FEE under this LICENSE AGREEMENT and/or any of the
RELATED AGREEMENTS. D&PL or its successor shall also within such thirty
(30) days either (i) give notice to SYNGENTA that D&PL or its successor
will continue to make the installment payments of the LICENSE PURCHASE
PRICE to SYNGENTA provided for under Subsection 2.2 of the LICENSE PURCHASE
AGREEMENT as the same become due and payable or (ii) pay SYNGENTA the
MONSANTO/D&PL CHANGE OF CONTROL TERMINATION PAYMENT. In the event D&PL
gives the notice provided for in Subsection 10.2(b)(i), this LICENSE
AGREEMENT shall continue in full force and effect. In the event that D&PL
does not give the notice provided for in Subsection 10.2(b)(i), this
LICENSE AGREEMENT shall terminate (except with respect to any Cry1Ab GENE
EVENT for which GOVERNMENT APPROVAL in the United States has been obtained
as of the date of closing of a MONSANTO/D&PL CHANGE OF CONTROL
TRANSACTION), and, upon payment of the MONSANTO/D&PL CHANGE OF CONTROL
TERMINATION PAYMENT, D&PL shall have no further obligation to pay SYNGENTA
further installments of the LICENSE PURCHASE PRICE. In addition, in the
event of a MONSANTO/D&PL CHANGE OF CONTROL, SYNGENTA shall have the rights
specified in Subsection 3.5(c)(ii) with respect to all Cry1Ab GENE EVENTS
and SYNGENTA'S obligations under Section 12 of this LICENSE AGREEMENT shall
no longer apply to then pending or subsequently asserted patent
infringement claims.
(c) SYNGENTA and D&PL may terminate this LICENSE AGREEMENT by
mutual written agreement.
(d) In the event that the Roundup Ready(R) Gene License and Seed
Services Agreement (as described in Subsection 11.2(b)), as the same may be
amended from time to time in accordance with its terms, should cease to be
in effect for a continuous period of six (6) months or longer or shall
cease to contain provisions permitting D&PL to insert the Cry1Ab GENE in
DELTAPINE CULTIVARS embodying a MONSANTO Roundup Ready(R) Gene (as defined
in the Roundup Ready(R) Gene License and Seed Services Agreement including
the "First Roundup Ready(R) Gene" and "Subsequent Roundup Ready(R) Gene" as
defined therein), as a result of agreement between MONSANTO and D&PL or as
a result of a written order or award by court or arbitration panel that is
effective and binding on D&PL, and such agreement, order or award is not
stayed, lifted or vacated and/or D&PL has not entered into an agreement
with MONSANTO or its successor and/or assigns for reinstatement, novation
or replacement of the Roundup Ready(R) Gene License and Seed Services
Agreement, containing provisions permitting D&PL to insert the Cry1Ab GENE
in DELTAPINE CULTIVARS embodying MONSANTO'S Roundup Ready(R) Gene, SYNGENTA
shall have the right, exercisable by written notice delivered to D&PL
within sixty (60) days after the end of such six (6) month period, to elect
to have the provisions of Section 3.5(c)(ii) apply. If SYNGENTA delivers
such notice, SYNGENTA must deliver the same notice as to the RELATED
AGREEMENT for the license of a NON-Cry1Ab SYNGENTA LEPIDOPTERAN-ACTIVE GENE
if no event under Section 3.5(c)(ii) thereof has then occurred with respect
to such RELATED AGREEMENT. In the event that SYNGENTA delivers a notice as
described in the preceding sentence, D&PL shall have the right, exercisable
by written notice delivered to SYNGENTA within sixty (60) days after
receipt of such notice from SYNGENTA, to elect that (i) this LICENSE
AGREEMENT shall terminate (except with respect to any Cry1Ab GENE EVENT for
which GOVERNMENT APPROVAL in the United States of America has been obtained
as of the date of D&PL'S notice) and (ii) D&PL shall have no obligations to
pay SYNGENTA further installments of the LICENSE PURCHASE PRICE with
respect to this LICENSE AGREEMENT and (iii) SYNGENTA shall pay D&PL, within
thirty (30) days after the receipt of D&PL'S notice, an amount as set forth
in the schedule attached as Exhibit G. If SYNGENTA delivers such notice,
D&PL must deliver the same notice as to the RELATED AGREEMENT for the
license of a NON-Cry1Ab SYNGENTA LEPIDOPTERAN-ACTIVE GENE if no event under
Section 3.5(c)(ii) thereof has then occurred with respect to such RELATED
AGREEMENT. If this LICENSE AGREEMENT terminates under this Subsection
10.2(d), SYNGENTA shall have the rights specified in Subsection 3.5(c)(ii)
with respect to all Cry1Ab GENE EVENTS. Provided that anything in this
LICENSE AGREEMENT notwithstanding, Subsection 10.2(d) shall not apply (a)
in the event that the Roundup Ready(R) Gene License and Seed Services
Agreement should cease to be in effect due to the expiration of the
Licensed Patent Rights (as defined therein) and such expiration does not
adversely affect D&PL'S right to insert the Cry1Ab GENE in DELTAPINE
CULTIVARS embodying MONSANTO'S Roundup Ready(R) Gene and/or (b) in the
event that, as of the time the Roundup Ready(R) Gene License and Seed
Services Agreement should cease to be in effect or shall cease to contain
provisions permitting D&PL to insert the Cry1Ab GENE in DELTAPINE CULTIVARS
embodying MONSANTO'S Roundup Ready(R) Gene, D&PL has commenced COMMERCIAL
SALE in the United States of America of DELTAPINE Cry1Ab CULTIVARS
containing a HERBICIDE TOLERANCE GENE reasonably acceptable to SYNGENTA
based on a good faith evaluation by SYNGENTA of such HERBICIDE TOLERANCE
GENE, based on factors relating to HERBICIDE TOLERANCE GENE(S) and
glyphosate-based herbicide(s).
10.5 EFFECT OF TERMINATION. In the event that, upon termination of
this LICENSE AGREEMENT, D&PL retains rights to the Cry1Ab GENE EVENT(S) for
which GOVERNMENT APPROVAL in the United States of America has then been
obtained, SYNGENTA'S and D&PL'S respective rights and obligations with
respect to such Cry1Ab GENE EVENT(S) for which GOVERNMENT APPROVAL in the
United States of America has then been obtained shall continue on the same
terms and conditions set forth herein, provided that, in cases where D&PL'S
obligation to pay further installments of the LICENSE PURCHASE PRICE has
terminated, SYNGENTA and D&PL shall share any costs of maintenance of
government approvals and clearances with respect to Cry1Ab GENE EVENT(S)
for which D&PL'S LICENSES survive in accordance with the formula for
sharing of such expenses set forth in Subsections 4.3(c) and 4.3(d) based
on TECHNOLOGY FEES from COMMERCIAL SALES of LICENSED COMMERCIAL SEED
containing the subject Cry1Ab GENE EVENT(S) by D&PL and its sublicensees
and by SYNGENTA and its licensees in each relevant country in the most
recent twelve (12) month period ending August 31, provided that, if there
are no such COMMERCIAL SALES in a particular country, such costs shall be
borne equally by SYNGENTA and D&PL. In the event this LICENSE AGREEMENT is
terminated pursuant to Subsections 10.2, 10.3, 10.4, or 14.2(b)(ii)(B),
D&PL shall lose the rights and LICENSES granted to it pursuant to this
LICENSE AGREEMENT including (except as provided in Subsections 10.2(a), (b)
and (d) and this Subsection 10.5) losing the right to receive any portion
of the NET TECHNOLOGY FEES on any LICENSED COMMERCIAL SEED, provided that
if this LICENSE AGREEMENT is terminated pursuant to Subsections 10.3 or
10.4 by D&PL on account of a breach or default by SYNGENTA or pursuant to
10.2(c) by mutual agreement of D&PL and SYNGENTA or pursuant to Subsection
14.2(b)(ii)(B) upon a MONSANTO/SYNGENTA CHANGE OF CONTROL TRANSACTION, D&PL
and/or its sublicensees shall have the right for a period of three (3)
years from and after the date of termination to sell LICENSED COMMERCIAL
SEED then in their possession or which they are then obligated by contract
to take delivery. D&PL and SYNGENTA shall each receive the portions of NET
TECHNOLOGY FEE REVENUE related to such sales of LICENSED COMMERCIAL SEED as
provided in Subsection 6.2.
EXHIBIT M
******