**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
RESTATED VIP3A 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...................................................................12
2.3 DEFINED TERMS..........................................................................12
SECTION 3 -- LICENSES.............................................................................................13
3.1 LICENSE TO VIP3A GENE..................................................................13
3.2 LICENSE TO PRODUCE AND SELL LICENSED COMMERCIAL SEED...................................13
3.3 LICENSE TO MULTIPLY LICENSED COMMERCIAL SEED...........................................13
3.4 EX-U.S. SUBLICENSES....................................................................13
3.5 RIGHTS RETAINED BY SYNGENTA............................................................14
3.6 COMBINED GENE COTTON SEED..............................................................17
3.7 CONDITIONS ON LICENSES.................................................................19
3.8 GENE TRADEMARK.........................................................................20
3.9 THIRD PARTY VIOLATIONS OR INVALIDITY OF RESTRICTIONS ON
SUBLICENSE.............................................................................21
SECTION 4 -- COMMERCIAL DEVELOPMENT ACTIVITIES OF THE PARTIES.....................................................21
4.1 COMMERCIAL DEVELOPMENT PLAN............................................................21
4.2 CONSULTATION...........................................................................22
4.3 GENE PROTECTION AND REGULATORY ACTIVITIES..............................................22
4.4 SEED DEVELOPMENT AND COMMERCIALIZATION RESPONSIBILITIES................................29
4.5 LICENSE MANAGEMENT COMMITTEE...........................................................32
SECTION 5 -- OWNERSHIP OF TECHNOLOGY..............................................................................37
5.1 SYNGENTA TECHNOLOGY AND LICENSED PATENT RIGHTS.........................................37
5.2 D&PL TECHNOLOGY........................................................................37
5.3 SAFETY, TOXICOLOGY AND EFFICACY DATA...................................................37
5.4 USE OF DATA............................................................................38
SECTION 6 -- TECHNOLOGY FEES AND ROYALTY..........................................................................38
6.1 TECHNOLOGY FEE.........................................................................38
6.2 COMPENSATION TO SYNGENTA FOR LICENSE TO THE GENE.......................................42
6.3 ROYALTY PERIOD.........................................................................42
SECTION 7 -- BUSINESS RECORDS/PAYMENTS............................................................................44
7.1 D&PL BUSINESS RECORDS..................................................................44
7.2 D&PL REPORTS AND PAYMENTS..............................................................44
7.3 SYNGENTA BUSINESS RECORDS..............................................................45
7.4 SYNGENTA REPORTS AND PAYMENTS..........................................................45
7.5 PAYMENT ADDRESS........................................................................46
7.6 PAYMENTS...............................................................................47
7.7 INTEREST ON OUTSTANDING BALANCES.......................................................48
7.8 SYNGENTA PATENT RECORDS................................................................48
SECTION 8 -- CONFIDENTIALITY......................................................................................48
8.1 NON-DISCLOSURE OF CONFIDENTIAL INFORMATION.............................................48
8.2 PERIOD OF CONFIDENTIALITY..............................................................48
8.3 USES OF CONFIDENTIAL INFORMATION.......................................................49
SECTION 9 -- FORCE MAJEURE........................................................................................50
9.1 FORCE MAJEURE..........................................................................50
SECTION 10 -- TERM AND TERMINATION................................................................................51
10.1 TERM OF LICENSES.......................................................................51
10.2 TERMINATION............................................................................51
10.3 BREACH OF OBLIGATIONS..................................................................51
10.4 DEFAULT ON PAYMENT.....................................................................51
10.5 EFFECT OF TERMINATION..................................................................51
10.6 SURVIVAL OF COVENANTS..................................................................52
SECTION 11 -- WARRANTIES and WARRANTY LIMITATIONS.................................................................52
11.1 SYNGENTA WARRANTIES....................................................................52
11.2 D&PL WARRANTIES........................................................................53
11.3 MUTUAL WARRANTIES......................................................................54
11.4 NO OTHER WARRANTIES....................................................................54
11.5 EXCLUSIVE REMEDY.......................................................................55
SECTION 12 -- PATENT INFRINGEMENT.................................................................................55
SECTION 13 -- CLAIMS BY VENDEES FOR FAILURE OF GENE PERFORMANCE...................................................55
SECTION 14 -- GENERAL.............................................................................................55
14.1 ASSIGNMENT OF D&PL'S RIGHTS AND OBLIGATIONS............................................55
14.2 ASSIGNMENT OF SYNGENTA'S RIGHTS AND OBLIGATIONS........................................56
14.3 RELATION OF PARTIES....................................................................57
14.4 INTEGRATION OF CONTRACT................................................................57
14.5 WAIVERS AND AMENDMENTS.................................................................57
14.6 HEADINGS...............................................................................58
14.7 REFERENCES TO SECTIONS, SUBSECTIONS AND EXHIBITS.......................................58
14.8 PARTIAL INVALIDITY.....................................................................58
14.9 GOVERNING CONTRACT LAW.................................................................58
14.10 GOVERNING PATENT LAW...................................................................59
14.11 NOTICES................................................................................59
14.12 DISPUTE RESOLUTION.....................................................................59
14.13 INCORPORATION OF EXHIBITS..............................................................61
**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
Exhibits
Exhibit A - *****
Exhibit B - VIP3A 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 - *****
Exhibit H - *****
Exhibit I - *****
Exhibit J - *****
Exhibit K - *****
Exhibit L - *****
Exhibit M - *****
59
RESTATED
VIP3A GENE LICENSE AGREEMENT
----------------------------
THIS RESTATED VIP3A GENE LICENSE AGREEMENT ("LICENSE AGREEMENT") effective
made 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 VIP3A 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
VIP3A 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 VIP3A 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 VIP3A 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 "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.
2.1.13 [Text In Exhibit J]
2.1.14 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.
2.1.15 The term "DATE OF APPROVAL FOR COMMERCIAL SALE" with respect to a
particular VIP3A GENE EVENT means the date on which D&PL or its sublicensee(s)
commences COMMERCIAL SALE by D&PL (or its sublicensee(s) of LICENSED COMMERCIAL
SEED containing that VIP3A GENE EVENT in a particular country in THE TERRITORY
**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
or SYNGENTA or its licensee(s) commences COMMERCIAL SALE of LICENSED COMMERCIAL
SEED in a particular country pursuant to Subsection 4.3(k).
2.1.16 The term "DATE OF GOVERNMENT APPROVAL" with respect to any country
in THE TERRITORY with respect to a VIP3A GENE EVENT means the date on which
GOVERNMENT APPROVAL of such VIP3A GENE EVENT has been obtained in that country.
2.1.17 The term "DEADLOCK MATTER" shall have the meaning ascribed to that
term in Section 4.5(d)(v).
2.1.18 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.
2.1.19 The term "DELTAPINE VIP3A CULTIVAR" means a DELTAPINE CULTIVAR which
contains the VIP3A GENE.
2.1.20 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.
2.1.21 The term "DISPUTE" shall have the meaning ascribed to the term in
Section 14.12.
2.1.22 [Text In Exhibit I]
2.1.23 The term "EFFECTIVE DATE" means the date first above written.
2.1.24 The term "EXECUTIVE MANAGEMENT COMMITTEE" shall have the meaning
ascribed to that term in Section 4.5(d)(v).
2.1.25 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.
2.1.26 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
US ***** 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.
2.1.27 The term "GENE" means a DNA sequence contained in the genome of a
sexually viable cotton plant.
2.1.28 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.
2.1.29 The term "GOVERNMENT APPROVAL" with respect to a VIP3A 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 VIP3A 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 VIP3A 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 sublicensee).
2.1.30 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.
2.1.31 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).
2.1.32 [Text In Exhibit J]
2.1.33 [Text In Exhibit J]
2.1.34 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.
2.1.35 The term "LEPIDOPTERAN INSECTS" means a group of cotton bollworms
including: Helicoverpa zea (Cotton Bollworm), Heliothis virescens (Tobacco
Budworm), and Pectinophora gossypiella (Pink Bollworm).
2.1.36 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.
2.1.37 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 VIP3A GENE more
particularly described herein.
2.1.38 The term "LICENSE MANAGEMENT COMMITTEE" means the committee
established by D&PL and SYNGENTA pursuant to Subsection 4.5 of this LICENSE
AGREEMENT.
2.1.39 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.
2.1.40 The term "LICENSED COMMERCIAL SEED" means cotton seed which
incorporates the VIP3A GENE.
2.1.41 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.
2.1.42 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.
2.1.43 The term "LICENSES" means the licenses granted to D&PL under Section
3.
2.1.44 [Text In Item 2 of Exhibit K]
2.1.45 [Text In Item 2 of Exhibit K]
2.1.46 [Text In Item 2 of Exhibit K]
2.1.47 [Text In Item 2 of Exhibit K]
2.1.48 [Text In Item 2 of Exhibit K]
**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
2.1.49 [Text In Item 2 of Exhibit K]
2.1.50 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 VIP3A 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 VIP3A
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 VIP3A GENE (including
the HERBICIDE TOLERANCE GENE as described in Exhibit H with which the VIP3A GENE
is stacked, except to the extent paid or reimbursed by a party other than
SYNGENTA or D&PL)*****, 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 VIP3A 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.
2.1.51 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.
2.1.52 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.
2.1.53 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.
2.1.54 The term "NON-VIP3A SYNGENTA LEPIDOPTERAN-ACTIVE GENE" means a
LEPIDOPTERAN-ACTIVE GENE (other than the VIP3A GENE) which is licensed to D&PL
by SYNGENTA.
2.1.55 The term "NON-VIP3A SYNGENTA LEPIDOPTERAN-ACTIVE GENE EVENT" means a
transformation event by which a NON-VIP3A SYNGENTA LEPIDOPTERAN-ACTIVE GENE is
inserted in the genome of a sexually viable cotton plant.
2.1.56 The "PANEL" shall have the meaning ascribed to that term in Section
14.12.
2.1.57 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.
2.1.58 [Text In Exhibit I]
2.1.59 [Text In Exhibit I]
2.1.60 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
sublicensee(s), or if permitted under this LICENSE AGREEMENT, by or on behalf of
SYNGENTA and/or by a third party licensed by SYNGENTA.
2.1.61 The term "RECIPIENT" means a party which receives confidential
information of another party as described in Section 8.
2.1.62 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.
2.1.63 The term "RESPONSIBLE PARTY" shall have the meaning ascribed to that
term in Subsection 4.5(d)(ii).
2.1.64 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.
2.1.65 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.
2.1.66 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.
2.1.67 The term "SPECIAL TECHNOLOGY FEE PANEL" shall have the meaning
ascribed to that term in Subsection 6.1(d)(iv).
2.1.68 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.
2.1.69 The term "SUBLICENSEE VIP3A CULTIVAR" means a SUBLICENSEE CULTIVAR
which contains a VIP3A GENE.
2.1.70 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.
2.1.71 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.
2.1.72 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.
2.1.73 The term "SYNGENTA ROYALTY PERCENTAGE" means thirty percent (30%).
2.1.74 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.
2.1.75 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 VIP3A GENE in cotton including, but not
limited to, information and technology relating to cells and seeds of cotton
plants, DNA sequences and probes therefor 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
**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
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.
2.1.76 The term "TECHNOLOGY" means SYNGENTA TECHNOLOGY and/or D&PL
TECHNOLOGY as appropriate.
2.1.77 The term "TECHNOLOGY FEE" means the consideration (in whatever form
of value capture) received from LICENSED GROWERS for the rights to use the VIP3A
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.
2.1.78 [Text In Exhibit I]
2.1.79 The term "THE TERRITORY" means the world.
2.1.80 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.
2.1.81 The term "VARIETAL NAME" means a word or combination of words or
other combination of letters or numbers which identifies a cotton variety.
2.1.82 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.
2.1.83 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,
including, but not limited to, the transformation events designated by SYNGENTA
as the ***** series and the ***** series and any back-up or additional VIP3A
GENE transformation events resulting from current or subsequent work by or on
behalf of SYNGENTA.
2.1.84 The term "VIP3A GENE TRADEMARK" means a trademark owned by SYNGENTA
relating to the VIP3A GENE.
2.1.85 The term "VIP3A 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.
2.2 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 VIP3A 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 VIP3A 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 VIP3A 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 sublicensee
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 VIP3A 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 VIP3A 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 VIP3A 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 VIP3A 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 VIP3A GENE which utilize DELTAPINE
VIP3A CULTIVARS and/or SUBLICENSEE VIP3A 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 VIP3A 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 VIP3A 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 VIP3A 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 not commercialize LICENSED
COMMERCIAL SEED with the VIP3A 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
**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
(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) *****.
(f) *****.
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 VIP3A GENE and/or VIP3A 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 VIP3A 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 VIP3A GENE or VIP3A 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 VIP3A 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 VIP3A 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 VIP3A 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
VIP3A 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 sublicensee shall not sell LICENSED COMMERCIAL SEED of
DELTAPINE VIP3A CULTIVARS or SUBLICENSEE VIP3A 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 VIP3A 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 VIP3A GENE TRADEMARK and
accompanying logo on all packages of LICENSED COMMERCIAL SEED in accordance with
the VIP3A GENE TRADEMARK LICENSE AGREEMENT. SYNGENTA shall utilize, and require
any other permitted licensees to utilize, the same VIP3A GENE TRADEMARK in the
same manner prescribed in the VIP3A GENE TRADEMARK LICENSE AGREEMENT on all
packages of LICENSED COMMERCIAL SEED.
(b) It is agreed that the VIP3A GENE TRADEMARK shall be licensed to D&PL on
a non-exclusive royalty-free basis pursuant to the VIP3A GENE TRADEMARK LICENSE
AGREEMENT. The parties shall execute said VIP3A GENE TRADEMARK LICENSE AGREEMENT
following identification of the final graphic form of the VIP3A GENE TRADEMARK
by SYNGENTA.
(c) The VIP3A GENE TRADEMARK shall be utilized in the manner specified in
the VIP3A GENE TRADEMARK LICENSE AGREEMENT. SYNGENTA shall inform D&PL of the
final graphic form of the VIP3A 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 VIP3A 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
VIP3A 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 VIP3A GENES, VIP3A 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 VIP3A
GENE, VIP3A GENE EVENTS and related SYNGENTA TECHNOLOGY and the VIP3A 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 VIP3A GENE, VIP3A GENE EVENTS, and related SYNGENTA
TECHNOLOGY and the VIP3A 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
VIP3A GENE EVENT approved for COMMERCIAL DEVELOPMENT by developing gene and
event specific PCR primers and protocols for detection of the VIP3A GENE and
each VIP3A GENE EVENT that is released for field testing, developing event
specific PCR primers and protocols for detection and zygosity determination of
each VIP3A GENE EVENT released to D&PL, developing ELISA strip and plate
antibodies and protocols for detection of transgenic proteins produced by each
VIP3A 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 VIP3A GENE and the particular VIP3A 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 VIP3A GENE and the VIP3A 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 VIP3A GENE and VIP3A 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 VIP3A CULTIVARS
in Costa Rica
**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
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 VIP3A GENE and VIP3A 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 VIP3A GENE and VIP3A 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 VIP3A GENE
and VIP3A 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 VIP3A GENE or VIP3A 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 VIP3A 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 VIP3A GENE or VIP3A 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 VIP3A CULTIVARS and/or SUBLICENSEE VIP3A 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 VIP3A 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 VIP3A
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 VIP3A GENE as
provided in Subsection 4.3(k).
(j) All government approvals and any import, movement and release approvals
and permits for the VIP3A GENE and VIP3A GENE EVENTS obtained by SYNGENTA shall
be owned and held in the name of SYNGENTA or its AFFILIATES unless otherwise
**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
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
VIP3A GENE and the VIP3A 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 VIP3A 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 VIP3A GENE and the VIP3A 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
VIP3A GENE in a particular country outside the United States of America,
SYNGENTA shall have the right to commercialize the VIP3A GENE in that country in
any cotton cultivars selected by SYNGENTA (other than in DELTAPINE VIP3A
CULTIVARS or SUBLICENSEE VIP3A 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 VIP3A 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 VIP3A 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 VIP3A GENE and VIP3A
GENE EVENT in such country. After recovery by SYNGENTA of its regulatory and
other expenses necessary for GOVERNMENT APPROVAL and introduction of the VIP3A
GENE and VIP3A 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). (a) D&PL agrees that not later than two (2) years after GOVERNMENT
APPROVAL of the VIP3A 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 VIP3A 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 (inviable cotton seed) each VIP3A 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 the 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 VIP3A CULTIVARS and SUBLICENSEE VIP3A
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 VIP3A GENE EVENTS and LICENSED COMMERCIAL
SEED:
(i) The criteria for COMMERCIAL INSECT RESISTANCE for VIP3A GENE EVENTS;
(ii) Criteria for selection of VIP3A 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 VIP3A GENE EVENTS have exhibited the criteria for
COMMERCIAL INSECT RESISTANCE;
(ii) Which particular VIP3A GENE EVENTS shall be subject to COMMERCIAL
DEVELOPMENT;
(iii) Whether particular DELTAPINE VIP3A CULTIVARS and SUBLICENSEE VIP3A
CULTIVARS meet the AGRONOMIC CRITERIA, GENE EQUIVALENCY STANDARDS and SEED
PURITY STANDARDS; and
(iv) Which particular DELTAPINE VIP3A CULTIVARS and SUBLICENSEE VIP3A
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 VIP3A GENES to LICENSED COMMERCIAL SEED, including items
which may be deducted from TECHNOLOGY FEES in determining NET TECHNOLOGY FEE
REVENUE, as provided in Subsection 2.1.50;
(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 VIP3A
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 VIP3A 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 VIP3A GENE and VIP3A 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
VIP3A 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
**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
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) ***** [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 VIP3A 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(i), 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 sublicensee of
LICENSED COMMERCIAL SEED containing the VIP3A 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 VIP3A GENE and no NON-VIP3A
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 VIP3A GENE by D&PL or by its sublicensee in that
country; and (b) where the LICENSED COMMERCIAL SEED contains the VIP3A GENE and
a NON-VIP3A 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-VIP3A 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-VIP3A 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 VIP3A GENE
and the NON-VIP3A SYNGENTA LEPIDOPTERAN-ACTIVE GENE in combination, by D&PL or
by its sublicensee 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 VIP3A GENE and related SYNGENTA TECHNOLOGY into other DELTAPINE
CULTIVARS, and (c) to use the VIP3A GENE, markers, promoters, and other genetic
material that were transferred into the specific DELTAPINE VIP3A CULTIVAR(S)
with the VIP3A 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 VIP3A GENE and any then approved VIP3A
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 VIP3A GENE or LICENSED COMMERCIAL SEED containing the VIP3A GENE,
or the markers, promoters, and other genetic material that were transferred to
D&PL with the VIP3A 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 VIP3A 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 VIP3A GENE to the extent such
disclosure is necessary or desirable for the development and commercialization
of cotton seed containing the VIP3A 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 VIP3A 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 VIP3A GENE EVENT
in a particular country, SYNGENTA: (i) is the owner or licensee of the VIP3A
GENE, the subject VIP3A 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 VIP3A GENE, the
subject VIP3A 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 VIP3A 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
VIP3A GENE and/or any VIP3A 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 sublicense shall not sell), without the written
approval of SYNGENTA, LICENSED COMMERCIAL SEED that fails to meet the SEED
PURITY STANDARD for the VIP3A GENE EVENT embodied therein and/or that fails to
meet the GENE EQUIVALENCY STANDARD for the VIP3A 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 VIP3A 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 sublicensee of D&PL commences COMMERCIAL SALE of
LICENSED COMMERCIAL SEED of any particular sublicensee VIP3A 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 sublicensee.
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 VIP3A CULTIVARS;
(b) THE SCOPE OR VALIDITY OF ANY PATENT OF THE LICENSED PATENT RIGHTS, OR
(c) THE VIP3A GENE, RELATED SYNGENTA TECHNOLOGY, LICENSED COMMERCIAL SEED,
DELTAPINE CULTIVARS, DELTAPINE VIP3A 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 the 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
sublicencees' activities under this LICENSE AGREEMENT or a RELATED AGREEMENT
infringe a claim of a 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,
**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
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-M, 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: /s/ R. D. Greene
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Title: Vice President - Finance and Treasurer
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SYNGENTA CROP PROTECTION AG
By: /s/ D. J. Jones
--------------------------------------------------
Title: Head of Business Development
-----------------------------------------------
By: /s/ G. J. Walker
--------------------------------------------------
Title: Financial Controller
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**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
EXHIBIT A
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EXHIBIT B
VIP3A 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 VIP3A GENE(S) (as
------------------
defined in the LICENSE AGREEMENT) (hereinafter referred to as the "VIP3A Gene
Trademark"); and
WHEREAS, SYNGENTA'S Affiliate Syngenta Crop Protection AG and LICENSEE
are parties to the VIP3A 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 VIP3A Gene
Trademark in connection with the sale of transgenic cotton seed containing VIP3A
insect resistance genes licensed to D&PL pursuant to the LICENSE AGREEMENT and
the Parties wish to use the VIP3A 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 VIP3A Gene Trademark on or in relation to cottonseed which contains
VIP3A 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 VIP3A 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 VIP3A
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 VIP3A 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 VIP3A 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 VIP3A Gene
Trademark shall be in accordance with the provisions of Section 3.8 of the
LICENSE AGREEMENT and agrees that the VIP3A 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 VIP3A 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 VIP3A 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 VIP3A 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 VIP3A 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 VIP3A 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
VIP3A 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:
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DELTA AND PINE LAND COMPANY
By:
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Title:
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**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
EXHIBIT C
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EXHIBIT D
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AGRONOMIC CRITERIA FOR DELTAPINE CULTIVARS
------------------------------------------
Agronomic performance and suitability of each DELTAPINE VIP3A CULTIVAR is
the responsibility of D&PL. A new DELTAPINE VIP3A 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
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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 VIP3A 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.
**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
EXHIBIT F
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PRICING REGIONS IN THE UNITED STATE
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Region State 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
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
**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
EXHIBIT G
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**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
EXHIBIT H
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**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
EXHIBIT I
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**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
EXHIBIT J
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**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
EXHIBIT K
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**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
EXHIBIT L
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**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND COMPANY**
EXHIBIT M
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