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CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION. EACH SUCH OMISSION IS DESIGNATED [***].
COLLABORATION AGREEMENT AND LICENSE
This Agreement (the "Agreement") is entered into on this 31st day of
January, 1996 by and between Monsanto Company, and DEKALB Genetics Corporation.
SECTION 1 - BACKGROUND AND PARTIES
1.01 Monsanto Company ("MONSANTO") is a corporation of the
State of Delaware with principal offices at 800 N. Lindbergh Boulevard, St.
Louis, Missouri 63167.
1.02 DEKALB Genetics Corporation ("DEKALB") is a
corporation of the State of Delaware with principal offices at 3100 Sycamore
Road, DeKalb, Illinois 60115.
1.03 MONSANTO has certain rights relating to genetic
element(s), germplasm, plasmid(s), and gene(s), including knowledge, know-how,
technical information, and expertise, relating to and useful in agricultural
biotechnology and plant genetics directed to the development of plants having
desirable characteristics, such as but not limited to resistance to disease,
damage by pests, and damage by chemical agents, and to other crop improvements,
such as but not limited to increased crop yield and increased concentration in
the crop of a desired component, and has rights in and to patents and/or patent
applications covering the genetic element(s), germplasm, plasmid(s), and
gene(s) and other aspects of agricultural biotechnology and plant genetics.
1.04 DEKALB has certain rights relating to genetic
element(s), germplasm, plasmid(s), and gene(s), including knowledge, know-how,
technical information, and expertise, relating to and useful in agricultural
biotechnology and plant genetics directed to the development of plants having
desirable characteristics, such as but not limited to resistance to disease,
damage by pests, and damage by chemical agents, and to other crop improvements,
such as but not limited to increased crop yield and increased concentration in
the crop of a desired component, and has rights in and to patents and/or patent
applications covering the genetic element(s), germplasm, plasmid(s), and
gene(s) and other aspects of agricultural biotechnology and plant genetics.
1.05 The parties are interested in the development and
commercialization of plants having such characteristics. Each party therefore
is interested in obtaining a limited license under the other party's property
rights, and desires to grant such a license to the other, all upon the terms
and conditions provided herein.
1.06 The parties agree that significant mutual benefits
may be realized by making available to each other and to third parties such
improvements in agricultural
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biotechnology and plant genetics as may result from such research and
development and other activities. The parties agree to make such improvements
available to each other and to third parties in accordance with terms of
licenses each agrees to grant to the other and to third parties, all upon the
terms and conditions provided herein.
1.07 The parties have previously reached an understanding
regarding [***] and commercialization of [***] shall not be governed by this
Agreement. The parties have entered into a Corn Borer-Protected Corn License
Agreement, a Glyphosate Protected Corn License Agreement, and a CaMV Promoter
License Agreement, each of even date herewith. The parties agree that these
aforementioned documents are controlling with regard to the subject matters
addressed therein.
1.08 The parties agree that the Outline for Collaboration
Effort attached hereto as Appendix A embodies and exemplifies the intent of the
parties in entering into this Agreement.
SECTION 2-DEFINITIONS
For purposes of this Agreement, the following words and phrases shall
have the following meanings:
2.01 The term "Affiliate(s)," as used herein, means with
respect to an entity, any person that is at least fifty percent (50%) owned
by, or, directly or indirectly, is controlled by, under common control with or
in control of, that entity. The term "control" shall mean the possession,
direct or indirect, of the power to direct or cause the direction of the
management and policies of an entity whether through the ownership of
securities, by contract or otherwise.
2.02 The term "Beneficial Characteristic," as used herein,
means a characteristic, such as but not limited to resistance to disease,
damage by pests, and damage by chemical agents, and to other crop improvements,
such as but not limited to increased crop yield and increased concentration in
the crop of a desired component, resulting from a Project.
2.03 The term "Biological Material," as used herein, means
material including, but not limited to, cells, plants, seeds, genes (including
native corn genes and associated markers), genetic elements, and plasmids.
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2.04 The term "Business Associate," as used herein, is a
third party with which a party to this Agreement has an extensive business
relationship that contemplates terms and conditions of dealings that would not
otherwise be obtained from or granted to a third party, or a technical
relationship, such as but not limited to a relationship that contemplates
sharing technical data and information that would otherwise not be shared with
a third party. The Business Associates of DEKALB and MONSANTO include, but are
not limited to, those listed in Exhibits A-1 and B-1, respectively. A third
party shall not be considered to be a Business Associate solely on the basis of
the granting of a license pursuant to this Agreement.
2.05 The term "Collaborative Effort," as used herein,
means a Project which the parties mutually agree in writing shall be called a
Collaborative Effort, for which the parties shall designate a Lead
Collaborator, and for which the parties shall designate a party in which the
legal title to the intellectual property rights shall vest.
2.06 The term "Commercialize a Product," as used herein,
means to make a Product available for commercial purposes to a third party
customer or licensee.
2.07 The term "Confidential Information," as used herein,
means any proprietary information, including technical, economic, financial or
marketing information, which either party considers confidential and which is
disclosed to the other party.
2.08 The term "DEKALB's Crops," as used herein, means
corn, [***].
2.09 The term "MONSANTO's Crops," as used herein, means
[***].
2.10 The term "Effective Date" is defined in Subsection
8.01 of this Agreement.
2.11 The term "Existing Project," as used herein, means a
Project for which substantive progress toward an actual reduction to practice
has occurred before the Effective Date of this Agreement, and which is known or
reasonably expected to result in a Beneficial Characteristic.
2.12 The term "Field," as used herein, means agricultural
biotechnology.
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2.13 The term "Fiscal Year" shall mean a twelve-month
period ending August 31st.
2.14 The term "Independent Effort," as used herein, means
a Project that is not a Collaborative Effort. A Project shall be presumed to
be an Independent Effort, unless it has been mutually agreed to be
characterized as a Collaborative Effort.
2.15 The term "International Associate," as used herein,
means any foreign-based person that has been licensed by DEKALB or MONSANTO to
sell or otherwise distribute DEKALB- or MONSANTO- branded products. The
International Associates of DEKALB and MONSANTO include, but are not limited
to, those listed in Exhibit A-2 and B-2, respectively. A third party shall not
be considered to be an International Associate solely on the basis of the
granting of a license pursuant to this Agreement.
2.16 The term "Know-How," as used herein, means any
knowledge and proprietary information disclosed to a party by the other party
prior to or during the term of this Agreement which is not generally publicly
known, including, without limitation, all chemical, biochemical, toxicological,
manufacturing, formulation, molecular and plant pathology, and scientific
research information, whether or not capable of precise separate description
but which alone or when accumulated gives to the one acquiring it an ability to
develop and commercialize a product through study, testing, production,
formulation or marketing which that party would otherwise not have been able to
develop and commercialize in the same manner.
2.17 The term "DEKALB Know-How," as used herein, means any
Know-How disclosed to MONSANTO by DEKALB.
2.18 The term "MONSANTO Know-How," as used herein, means
any Know-How disclosed to DEKALB by MONSANTO.
2.19 The term "Lead Collaborator," as used herein, means,
for a Collaborative Effort, (a) MONSANTO, if the Product resulting from the
Collaborative Effort relates to a DEKALB Crop; (b) DEKALB, if the Product
resulting from the Collaborative Effort relates to a MONSANTO Crop; or (c)
notwithstanding Subsections 2.19(a) and 2.19(b), the party which the parties
mutually agree in writing shall be designated as the Lead Collaborator.
2.20 The term "Licensed MONSANTO Method" shall mean any
method the
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use or practice of which would, in the absence of a license, infringe one or
more Valid MONSANTO Claims of an unexpired patent included in the Licensed
MONSANTO Patent Rights or which involves the use of MONSANTO Know-How or
Licensed MONSANTO Non-Patent Proprietary Materials.
2.21 The term "Licensed DEKALB Method" shall mean any
method the use or practice of which would, in the absence of a license,
infringe one or more Valid DEKALB Claims of an unexpired patent included in the
Licensed DEKALB Patent Rights or which involves the use of DEKALB Know-How or
Licensed DEKALB Non-Patent Proprietary Materials.
2.22 The term "Licensed MONSANTO Non-Patent Proprietary
Materials," as used herein, means Biological Material in which MONSANTO has a
Proprietary Interest.
2.23 The term "Licensed DEKALB Non-Patent Proprietary
Materials," as used herein, means Biological Material in which DEKALB has a
Proprietary Interest.
2.24 The term "Licensed MONSANTO Patent Rights," shall
mean all patent licenses and sublicenses for use in the Field to which MONSANTO
and/or a wholly-owned Affiliate of MONSANTO is a licensee or sublicensee (to
the extent allowed by such licenses or sublicenses) and all patents and patent
applications for use in the Field and owned by MONSANTO and/or a wholly-owned
Affiliate of MONSANTO, filed prior to or during the term of this Agreement, and
any and all patents maturing from these applications or maturing from
applications that are divisionals, continuations or continuations-in-part of
these applications, foreign (i.e., ex-U.S.) equivalents of the foregoing and
any and all reissues or extensions of any of the foregoing.
2.25 The term "Licensed DEKALB Patent Rights," shall mean
all patent licenses and sublicenses for use in the Field to which DEKALB and/or
a wholly-owned Affiliate of DEKALB is a licensee or sublicensee (to the extent
allowed by such licenses or sublicenses) and all patents and patent
applications for use in the Field and owned by DEKALB and/or a wholly-owned
Affiliate of DEKALB, filed prior to or during the term of this Agreement, and
any and all patents maturing from these applications or maturing from
applications that are divisionals, continuations or continuations-in-part of
these applications, foreign (i.e., ex-U.S.) equivalents of the foregoing and
any and all reissues or extensions of any of the foregoing.
2.26 The term "Licensed DEKALB Product(s)" shall mean
material including, but not limited to, cells, plants, or seeds and products
thereof, which is produced
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by a Licensed MONSANTO Method or which, in the course of its manufacture, use,
or sale would, in the absence of a license, infringe a Valid MONSANTO Claim or
the production of which involves the use of MONSANTO Know-How or Licensed
MONSANTO Non-Patent Proprietary Materials.
2.27 The term "Licensed MONSANTO Product(s)" shall mean
material including, but not limited to, cells, plants, or seeds and products
thereof, which is produced by a Licensed DEKALB Method or which, in the course
of its manufacture, use, or sale would, in the absence of a license, infringe a
Valid DEKALB Claim or the production of which involves the use of DEKALB
Know-How or Licensed DEKALB Non-Patent Proprietary Materials.
2.28 The term "Most Favored Licensee," as used herein,
means the third party licensee which enjoys the most favorable terms considered
as a whole. Terms to be considered in evaluating the license include, but are
not limited to, access time, royalty rate and other terms, and whether such
license imposes one or more substantial obligations imposed under this
Agreement.
2.29 The term "Product," as used herein, means Biological
Material resulting from a Project intended to enable production of a crop
having a Beneficial Characteristic.
2.30 The term "Project," as used herein, means any
research or development effort in the Field.
2.31 The term "Proprietary Interest," as used herein,
means an ownership interest in tangible property.
2.32 The term "Seed Company," as used herein, means an
entity, other than DEKALB and MONSANTO, whose primary business with respect to
Product is the selling of Product directly to growers.
2.33 The term "Rights," as used herein, means every
intellectual property right or tangible object in which such a right may
reside, such as but not limited to patent, know-how, trade secret, or
Biological Material, resulting from a Collaborative Effort or an Independent
Effort.
2.34 The term "MONSANTO Rights," as used herein, means
Rights owned
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by MONSANTO.
2.35 The term "DEKALB Rights," as used herein, means
Rights owned by DEKALB.
2.36 The term "Territory," as used herein, means the
world.
2.37 The term "Valid DEKALB Claim," as used herein, means
an issued claim included within the Licensed DEKALB Patent Rights which has not
been finally held invalid or unenforceable by a decision of a court or other
authority of competent jurisdiction which is not appealable, or with respect to
a pending claim of the Licensed DEKALB Patent Rights which arise from a
Collaborative Effort, has not been irrevocably abandoned or finally held to be
unpatentable by a court or other authority of competent jurisdiction in a
proceeding which is not appealable. For purposes of this Agreement, the filing
of a continuation application in response to a final rejection, in place of
filing an appeal of such final rejection, shall not be considered as an action
that shall cause any such finally-rejected claim to be considered invalid.
2.38 The term "Valid MONSANTO Claim," as used herein,
means an issued claim included within the Licensed MONSANTO Patent Rights which
has not been finally held invalid or unenforceable by a decision of a court or
other authority of competent jurisdiction which is not appealable, or, with
respect to a pending claim of the Licensed MONSANTO Patent Rights which arise
from a Collaborative Effort, has not been irrevocably abandoned or finally held
to be unpatentable by a court or other authority of competent jurisdiction in a
proceeding which is not appealable. For purposes of this Agreement, the filing
of a continuation application in response to a final rejection, in place of
filing an appeal of such final rejection, shall not be considered as an action
that shall cause any such finally-rejected claim to be considered invalid.
2.39 The term "Value," as used herein, means remuneration
of any form received or expected to be received in payment for a license
including Rights, or a sublicense within the scope of such a license, without
regard to which party granted the license.
2.40 The term "-branded," when used in conjunction with an
entity's name, means a trademark or logo of that entity, whether registered or
not, affixed to a product or product container, or used in advertising,
promotion, or other marketing of such a product.
2.41 The term "person," as used herein, shall mean an
individual,
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corporation, partnership, limited liability company, joint venture,
association, trust, unincorporated organization or other entity.
SECTION 3 - CONVEYANCE OF RIGHTS
3.01 LICENSE GRANT BY MONSANTO: Subject to the terms and
conditions of this Agreement, MONSANTO hereby grants to DEKALB and its wholly
- -owned Affiliate(s) a royalty-free, non-exclusive, license to use the Licensed
MONSANTO Patent Rights, Licensed MONSANTO Non-patent Proprietary Materials,
MONSANTO Know-How, and MONSANTO Rights for research and development in the
Field in the Territory.
3.02 LICENSE GRANT BY DEKALB: Subject to the terms and
conditions of this Agreement, DEKALB hereby grants to MONSANTO and its wholly
- -owned Affiliate(s) a royalty-free, non-exclusive, license to use the Licensed
DEKALB Patent Rights, Licensed DEKALB Non-patent Proprietary Materials, DEKALB
Know-How, and DEKALB Rights for research and development in the Field in the
Territory.
3.03 DISCLOSURE OF PATENT RIGHTS: MONSANTO and DEKALB
shall have the obligation of disclosing to the other [***] Upon written
request, MONSANTO and DEKALB shall provide the other with additional
information concerning [***].
SECTION 4 - AGREEMENT TO GRANT LICENSE
4.01 DISTINCTIONS BETWEEN PRODUCTS: The parties agree
that the terms of any royalty-bearing license granted by one party to the other
hereunder and any remuneration received when a party Commercializes a Product
shall be related to the type of Product commercialized, i.e., whether the
Product resulted from an Independent Effort or a Collaborative Effort. The
parties further agree that, for each such Commercialized Product, if any, the
parties shall enter into a license agreement having terms and conditions in
accordance with this Agreement.
4.02 RIGHT TO COMMERCIALIZE A PRODUCT THAT RESULTED FROM
AN INDEPENDENT EFFORT:
(a) Subject to the terms and conditions of this
Agreement, DEKALB grants to MONSANTO the right to Commercialize a Product that
results from an Independent Effort of DEKALB for MONSANTO's Crops in accordance
with Subsection 4.08 for the
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benefit of MONSANTO and MONSANTO's Affiliates, Business Associates, and
International Associates. [***]
(b) Subject to the terms and conditions of this
Agreement, MONSANTO grants to DEKALB the right to Commercialize a Product that
results from an Independent Effort of MONSANTO for DEKALB's Crops in accordance
with Subsection 4.04 for the benefit of DEKALB and DEKALB's Affiliates,
Business Associates, and International Associates. [***]
4.03 RIGHTS OF LEAD COLLABORATOR: Subject to Subsection
5.02 and notwithstanding 4.05, the Lead Collaborator shall have the right to
sublicense the Product of a Collaborative Effort to Seed Companies. The party
that is not the Lead Collaborator shall grant to the Lead Collaborator such
Rights as are necessary to Commercialize the Product.
4.04 AGREEMENT TO GRANT LICENSE BY MONSANTO: Subject to
the terms and conditions of this Agreement, including but not limited to
Subsections 4.03 and 5.02, MONSANTO hereby agrees to grant to DEKALB a
royalty-bearing, non-exclusive, license limited to DEKALB Crops under the
Licensed MONSANTO Patent Rights, Licensed MONSANTO Non-patent Proprietary
Materials, MONSANTO Know-How, and MONSANTO Rights, (1) to make, have made, use
and sell Licensed DEKALB Products in the Field in the Territory, and (2) to
sublicense Affiliates, Business Associates, and International Associates to
make, have made, use, and sell Licensed DEKALB Products within the scope of the
license. No sublicensee hereunder shall have the right to further sublicense
any rights hereunder.
4.05 DISTRIBUTION OF LICENSED PRODUCTS: With respect to
the sales of Licensed DEKALB Products hereunder in countries of the Territory,
DEKALB and its Affiliates, Business Associates, and International Associates
shall only be permitted to sell and distribute DEKALB-branded Licensed DEKALB
Products; [***]. With respect to the sales of Licensed MONSANTO Products
hereunder in countries of the Territory, MONSANTO and its Affiliates, Business
Associates and International Associates shall only be permitted to sell and
distribute MONSANTO-branded, MONSANTO Affiliate-
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branded, MONSANTO Business Associate-branded, or MONSANTO International
Associate-branded Licensed MONSANTO Products.
4.06 MARKING OF LICENSED DEKALB PRODUCTS:
(a) DEKALB and its Affiliates, Business Associates,
International Associates and sublicensees shall conspicuously display on all
packages containing Licensed DEKALB Products to be sold or transferred to
permitted third-party growers or customers, the following notice (tailored to
reflect the nature of the conveyance), or a notice having the same meaning and
effect, with the blanks appropriately filled in to the extent such notice is
applicable in the respective area:
THE (PURCHASE/BAILMENT/TRANSFER) OF THESE SEEDS INCLUDES A
LIMITED LICENSE UNDER PATENT(S)__________ TO PRODUCE A SINGLE CROP IN THE UNITED
STATES (or other applicable country). THIS LICENSE DOES NOT EXTEND TO ANY USE
OTHER THAN PRODUCTION OF A SINGLE CROP.
(b) Where transactions occur in countries whose primary
language is not English, a translation of the notice in the appropriate
language shall be used if appropriate or required by law.
4.07 TRADEMARK USAGE: The parties will agree at the time
royalty-bearing licenses are granted under this Agreement which of the possible
trademarks of either party will be utilized on a Licensed DEKALB Product and on
a Licensed MONSANTO Product.
4.08 AGREEMENT TO GRANT LICENSE BY DEKALB: Subject to the
terms and conditions of this Agreement, including but not limited to
Subsections 4.03 and 5.02, DEKALB hereby agrees to grant to MONSANTO a
royalty-bearing, non-exclusive, license limited to MONSANTO Crops, under the
Licensed DEKALB Patent Rights, Licensed DEKALB Non-patent Proprietary
Materials, DEKALB Know-How, and DEKALB Rights, (1) to make, have made, use and
sell Licensed MONSANTO Products in the Field in the Territory, and (2) to
sublicense Affiliates, Business Associates, and International Associates to
make, have made, use and sell Licensed MONSANTO Products within the scope of
the license. No sublicensee hereunder shall have the right to further
sublicense any rights hereunder.
4.09 SUBCONTRACT RIGHTS: The rights granted to MONSANTO
pursuant to Subsections 4.03 and 4.08 to have Licensed MONSANTO Products made
by third parties
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shall not extend to the making of new transgenic germplasm without the prior
written approval of DEKALB which approval shall not be unreasonably withheld.
4.10 MARKING OF LICENSED MONSANTO PRODUCTS:
(a) MONSANTO and its Affiliates, Business Associates,
International Associates and sublicensees shall conspicuously display on all
packages containing Licensed MONSANTO Products to be sold or transferred to
permitted third-party growers or customers, the following notice (tailored to
reflect the nature of the conveyance), or a notice having the same meaning and
effect, with the blanks appropriately filled in to the extent such notice is
applicable in the respective area:
THE (PURCHASE/BAILMENT/TRANSFER) OF THESE SEEDS INCLUDES A
LIMITED LICENSE UNDER PATENT(S)__________ TO PRODUCE A SINGLE CROP IN THE UNITED
STATES (or other applicable country). THIS LICENSE DOES NOT EXTEND TO ANY USE
OTHER THAN PRODUCTION OF A SINGLE CROP.
(b) Where transactions occur in countries whose primary
language is not English, a translation of the notice in the appropriate
language shall be used if appropriate or required by law.
4.11 NO GRANTS REGARDING PROPRIETARY GERMPLASM:
Notwithstanding anything in this Agreement to the contrary, no rights in
proprietary varieties, inbreds or hybrids of either party are granted the other
under this Agreement.
4.12 COMMERCIALIZATION WITH GROWER AGREEMENT. MONSANTO
and DEKALB shall meet and discuss whether it is in their mutual interest to
commercialize the Licensed MONSANTO Products and Licensed DEKALB Products by
directly licensing or sublicensing the grower to use such Products.
SECTION 5 - PAYMENTS, REPORTS AND RECORD RETENTION
5.01 LICENSES INCLUDING RIGHTS RESULTING FROM INDEPENDENT
EFFORTS:
(a) If there exists a Most Favored Licensee having a
license of the same scope as a license to be granted a party to this Agreement,
which license includes Rights resulting from an Independent Effort, the party
seeking a license shall pay consideration and shall agree to such other terms
as are enjoyed by the Most Favored Licensee.
(b) If there is no Most Favored Licensee having a license
of the same
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scope as a license to be granted a party to this Agreement, which license
includes Rights resulting from an Independent Effort, a party seeking to grant
a license shall establish a good faith estimate of the rate that would be
granted to a third party in an identical license having terms and conditions
reasonable and customary in the subject area and resulting from arm's length
negotiation. The licensing party may establish such an estimate by obtaining
agreements from third parties to license or in any manner, including good faith
negotiations between the parties. The party seeking the license may pay
consideration and agree to such other terms as in the good faith estimate or
otherwise established, including by good faith negotiations.
(c) If despite good faith negotiations, the parties can
not reach agreement on the terms of such license under this Subsection 5.01,
then determination of the reasonable terms, including royalty, shall be
submitted to arbitration pursuant to the provisions of Subsection 12.15, if
requested by either party.
(d) In consideration for the grant of the license in
Section 3 and the agreement to grant licenses in Section 4, [***].
5.02 LICENSES INCLUDING RIGHTS RESULTING FROM A
COLLABORATIVE EFFORT:
(a) The parties agree that the Value received with regard
to a Collaborative Effort shall be shared, [***], by the parties.
The parties further agree as follows:
(i) The parties may mutually agree, on a
case-by-case basis, that one of them may receive [***] of the Value, with the
other party taking the remainder.
(ii) If the Collaborative Effort also is an
Existing Project of only one party, the parties may mutually agree, on a
case-by-case basis, that the party whose Existing Project is involved may
receive [***] of the Value, with the other party taking
the remainder.
(b) The parties agree that the Lead Collaborator shall
negotiate with third parties regarding terms of a license of appropriate scope
and including Rights. The parties further agree that royalties received from
that license shall be shared with the other party in accordance with Subsection
5.02(a).
(c) Subsection 5.02 (a) and (b) above notwithstanding, in
the case of crops that are not both a DEKALB Crop and a MONSANTO Crop, a party
as to its Crops may offer to the other party other terms regarding
remuneration for preferred status regarding a Right resulting from a
Collaborative Effort. The party whose Crops are not involved shall provide the
other party the opportunity to propose remuneration under this Subsection
5.02(c)
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[***] before providing a license to a third party. The party whose Crops are
not involved, [***], may accept any remuneration on which the parties agree,
[***]. However, if the parties are unable to agree on [***], then the Lead
Collaborator [***] and the Value shall be established in accordance with
Subsection 5.02(b) and shared in accordance with Subsection 5.02(a).
(d) Subsection 5.02(a) and (b) notwithstanding, in
the case of crops that are both a DEKALB Crop and a MONSANTO Crop,
either party may offer to the other party terms regarding remuneration for
preferred states regarding a Right resulting from a Collaborative Effort. The
other party may accept any proposed remuneration on which the parties agree,
[***]. However, if the parties are unable to agree on such [***], then
the Lead Collaborator [***] at the value established in accordance with
Subsection 5.02(b) and shared in accordance with Subsection 5.02(a).
(e) If DEKALB has not obtained a preferred status
under Subsection 5.02(c) or (d) as to a DEKALB Crop, or if MONSANTO has not
obtained a preferred status under Subsection 5.02(c) or (d) as to a MONSANTO
Crop, then DEKALB or MONSANTO, as applicable, shall [***] of Product resulting
from a Collaborative Effort, which [***] shall be established in accordance
with Subsection 5.02(b) and which payments shall become part of the Value
shared in accordance with Subsection 5.02(a).
(f) Legal title notwithstanding, to the extent an
technology that is dominated by Rights arising from a Collaborative Effort,
the value contributed by that Collaborative Effort to the Independent Effort
shall be shared in the same manner in which the Value was agreed to be shared
in the Collaborative Effort.
5.03 MOST FAVORED LICENSEE STATUS; MONSANTO LICENSES:
(a) If MONSANTO subsequently grants a license under the
Licensed MONSANTO Patent Rights to a third party having terms which considered
as a whole are more favorable to the licensee than the terms considered as a
whole granted to DEKALB as set forth in Subsections 5.01 and 5.02, then
MONSANTO shall promptly advise DEKALB as to such more favorable terms. DEKALB
shall, at its election, be entitled upon notice to MONSANTO to have its license
amended to substitute such third party terms for the terms of its license as of
the date upon which such license containing the more favorable terms shall have
become effective; provided, however, that (i) DEKALB also agrees to have
DEKALB's license amended to contain any additional obligations that are recited
in such license containing the more favorable terms and (ii) to the extent
there exists any non-cash consideration, including but not limited to a cross
license, involved in the more favorable license, the monetary equivalent
thereof shall be agreed by the parties for the purpose of
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evaluating the terms of the license. If despite good faith negotiations, the
parties cannot reach agreement on the monetary equivalent, then determination
of such equivalent shall be submitted to arbitration pursuant to the provisions
of Subsection 12.15, if requested by either party.
(b) In the event MONSANTO shall at any time while this
Agreement is in effect be compelled by applicable law to issue licenses under
the Licensed MONSANTO Patent Rights in the Field to any other person with terms
considered as a whole more favorable than those granted to DEKALB hereunder,
MONSANTO shall inform DEKALB of the order compelling any such licenses and
shall offer the terms only with respect to the country or countries wherein
such compulsory licenses have been ordered so that the new terms shall be no
less favorable to DEKALB than those granted to any third party under any such
compulsory license.
(c) Nothing in this Subsection 5.03 shall entitle DEKALB
to any retroactive adjustment, reduction in royalty, or other relief from any
of the provisions of this Agreement merely because MONSANTO shall commence
proceedings against a third party who has infringed the Licensed MONSANTO
Patent Rights, which proceedings shall be resolved by the third party becoming
licensed under the Licensed MONSANTO Patent Rights, so long as such subsequent
license agreement shall, at least prospectively, impose upon such third party
terms considered as a whole no more favorable than the terms considered as a
whole imposed upon DEKALB under this Agreement as set forth in Subsections 5.01
and 5.02.
5.04 MOST FAVORED LICENSEE STATUS; DEKALB LICENSEES:
(a) If DEKALB subsequently grants a license under the
Licensed DEKALB Patent Rights to a third party having terms which considered as
a whole are more favorable to the licensee than the terms considered as a whole
granted to MONSANTO as set forth in Subsections 5.01 and 5.02, then DEKALB
shall promptly advise MONSANTO as to such more favorable terms. MONSANTO
shall, at its election, be entitled upon notice to DEKALB to have that license
amended to substitute such third party terms for the terms of its license as of
the date upon which such license containing the more favorable terms shall have
become effective; provided, however, that (i) MONSANTO also agrees to have
MONSANTO's license amended to contain any additional obligations that are
recited in such license containing the more favorable terms and (ii) to the
extent there exists any non-cash consideration, including but not limited to a
cross-license, involved in the more favorable license, the monetary equivalent
thereof shall be agreed by the parties for the purpose of evaluating the terms
of the license. If despite good faith negotiations, the parties cannot reach
agreement on the monetary equivalent, then determination of such equivalent
shall be submitted to arbitration pursuant to the provisions of Subsection
12.15, if requested by either
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party.
(b) In the event DEKALB shall at any time while this
Agreement is in effect be compelled by applicable law to issue licenses under
the Licensed DEKALB Patent Rights in the Field to any other person with terms
considered as a whole more favorable than those granted to MONSANTO hereunder,
DEKALB shall inform MONSANTO of the order compelling any such licenses and
shall offer the terms only with respect to the country or countries wherein
such compulsory licenses have been ordered so that the new terms shall be no
less favorable to MONSANTO than those granted to any third party under any such
compulsory license.
(c) Nothing in this Subsection 5.04 shall entitle
MONSANTO to any retroactive adjustment, reduction in royalty, or other relief
from any of the provisions of this Agreement merely because DEKALB shall
commence proceedings against a third party who has infringed the Licensed
DEKALB Patent Rights, which proceedings shall be resolved by the third party
becoming licensed under the Licensed MONSANTO Patent Rights, so long as such
subsequent license agreement shall, at least prospectively, impose upon such
third party terms considered as a whole no more favorable than the terms
considered as a whole imposed upon MONSANTO under this Agreement as set forth
in Subsection 5.01 and 5.02.
5.05 FIRST COMMERCIAL SALE IN A COUNTRY:
(a) DEKALB shall promptly advise MONSANTO in writing of
the first commercial sales of Licensed DEKALB Products by DEKALB and by each
Affiliate, Business Associate, International Associate or sublicensee of DEKALB
in each country of the Territory.
(b) At the time such first commercial sale by an
Affiliate, Business Associate, International Associate or sublicensee of DEKALB
is reported pursuant to Subsection 5.05(a), DEKALB shall briefly describe the
relationship between DEKALB and the subject Affiliate, Business Associate,
International Associate or sublicensee which qualifies that entity as an
Affiliate, Business Associate, International Associate or sublicensee
respectively, of DEKALB.
(c) MONSANTO shall promptly advise DEKALB in writing of
the first commercial sales of Licensed MONSANTO Products by MONSANTO and by
each Affiliate, Business Associate, International Associate or sublicensees of
MONSANTO in each country of the Territory.
(d) At the time such first commercial sale by an
Affiliate, Business Associate, International Associate or sublicensee of
MONSANTO is reported pursuant to Subsection 5.05(c), MONSANTO shall briefly
describe the relationship between MONSANTO and the subject Affiliate, Business
Associate, International Associate or sublicensee which qualifies that entity
as an Affiliate, Business Associate, International
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Associate or sublicensee respectively, of MONSANTO.
5.06 SUBLICENSE; NOTIFICATION:
(a) MONSANTO shall promptly advise DEKALB in writing of
each sublicense of Licensed MONSANTO Products by MONSANTO.
(b) DEKALB shall promptly advise MONSANTO in writing of
each sublicense of Licensed DEKALB Products by DEKALB.
5.07 FEES: In addition to amounts otherwise owing
hereunder, MONSANTO shall pay to DEKALB the amounts set forth in the following
table on the date associated with each amount as compensation for the
non-exclusive rights granted to MONSANTO by DEKALB hereunder:
Date Amount
Effective Date of this Agreement [***]
First Anniversary of this Agreement [***]
Second Anniversary of this Agreement [***]
Third Anniversary of this Agreement [***]
Fourth Anniversary of this Agreement [***]
Fifth Anniversary of this Agreement [***]
Sixth Anniversary of this Agreement [***]
Seventh Anniversary of this Agreement [***]
Eighth Anniversary of this Agreement [***]
Ninth Anniversary of this Agreement [***]
Notwithstanding the foregoing, if this Agreement is terminated for any reason
with or without cause, except material uncured breach by DEKALB of this
agreement, prior to the ninth anniversary hereof, MONSANTO shall [***] DEKALB
[***] using a discount rate equal to that of U.S. Treasury securities of
similar maturity.
5.08 PAYMENTS: Each payment to DEKALB hereunder shall be
sent to:
(i) DEKALB's account by wire transfer:
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[***]
with a written notice of such wire transfer, or
(ii) to another account in the United States which
DEKALB may subsequently designate from time to time by notice to MONSANTO.
5.09 LATE PAYMENT: Notwithstanding any other remedy
available under the provisions of this Agreement, if any sum of money owed
hereunder is not paid when due, the unpaid amount shall bear interest
compounded quarterly, at an annual rate of one (1) percentage point above the
prime rate quoted by Morgan Guaranty Trust Company of New York on the day
payment was due, until paid.
SECTION 6 - REGULATORY APPROVAL AND PRODUCT REGISTRATION
6.01 REGULATORY APPROVALS: This Agreement does not
obligate either party to undertake any regulatory approvals or product
registrations. Each party shall bear its own cost of undertaking such
approvals or registrations it seeks.
6.02 REQUEST FOR INFORMATION BY DEKALB: Subject to the
provisions of Subsection 6.01, MONSANTO shall, at the reasonable request of
DEKALB, provide assistance to DEKALB in seeking such regulatory approvals
and/or product registrations, including data, studies and any applicable
regulatory filings which MONSANTO may have in its possession; provided,
however, that MONSANTO shall not be obligated to conduct any new experiments or
other work with respect to any such request by DEKALB.
6.03 REQUEST FOR INFORMATION BY MONSANTO: Subject to the
provisions of Subsection 6.01, DEKALB shall, at the reasonable request of
MONSANTO, provide assistance to MONSANTO in seeking such regulatory approvals
and/or product registrations, including data, studies and any applicable
regulatory filings which DEKALB may have in its possession; provided, however,
that DEKALB shall not be obligated to conduct any new experiments or other work
with respect to any such request by MONSANTO.
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SECTION 7 - PATENT PROCUREMENT AND INFRINGEMENT
7.01 PATENT PROCUREMENT: MONSANTO shall have the
exclusive right to apply for, and seek issuance of, maintain or abandon any or
all of the Licensed MONSANTO Patent Rights. DEKALB shall have the exclusive
right to apply for, and seek issuance of, maintain or abandon any or all of the
Licensed DEKALB Patent Rights.
7.02 PATENT INFRINGEMENT:
(a) DEKALB and MONSANTO shall each give prompt notice to
the other of any infringement of the Licensed MONSANTO Patent Rights or of the
Licensed DEKALB Patent Rights within the Field which may come to its attention.
(b) DEKALB shall not have the right (by operation of law
or otherwise) to enforce any Licensed MONSANTO Patent Right licensed hereunder
against any alleged infringer. MONSANTO shall not have the right (by operation
of law or otherwise) to enforce any Licensed DEKALB Patent Right licensed
hereunder against any alleged infringer.
SECTION 8 - WARRANTIES AND LIABILITIES
8.01 REPRESENTATIONS AND WARRANTIES:
(a) MONSANTO represents and warrants that:
(i) it is the owner or licensee of the Licensed
MONSANTO Patent Rights to the extent required for the grant of rights contained
herein;
(ii) it has not previously granted, and will not
grant to any third party during the term of this Agreement, any rights and
licenses under the Licensed MONSANTO Patent Rights that are in conflict with
the rights granted to DEKALB herein; and
(iii) it has full power, right and authority to
enter into and carry out its obligations under this Agreement.
(iv) it will not enter into a transaction which is
in conflict with the rights acquired by DEKALB hereunder.
(b) DEKALB represents and warrants that:
(i) it is the owner or licensee of the Licensed
DEKALB Patent Rights to the extent required for the grant of rights contained
herein;
(ii) it has not previously granted, and will not
grant to any third party during the term of this Agreement, any rights and
licenses under the Licensed DEKALB Patent Rights that are in conflict with the
rights granted to MONSANTO herein; and
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(iii) it has full power, right and authority to
enter into and carry out its obligations under this Agreement.
(iv) it will not enter into a transaction which is
in conflict with the rights acquired by MONSANTO hereunder.
8.02 NO OTHER WARRANTIES:
(a) EXCEPT FOR THE EXPRESS WARRANTIES IN SUBSECTION 8.01,
MONSANTO MAKES NO WARRANTIES REGARDING THE LICENSED MONSANTO PATENT RIGHTS
(INCLUDING, WITHOUT LIMITATION, THE VALIDITY OR SCOPE OF THE LICENSED MONSANTO
PATENT RIGHTS) OR THE LICENSED DEKALB PRODUCTS (INCLUDING, WITHOUT LIMITATION,
THE NON-INFRINGEMENT OF THE LICENSED DEKALB PRODUCTS ON THIRD PARTY PATENT
RIGHTS) OR OTHERWISE, EXPRESS OR IMPLIED, EITHER IN FACT OR BY OPERATION OF
LAW.
(b) EXCEPT FOR THE EXPRESS WARRANTIES IN SUBSECTION 8.01,
DEKALB MAKES NO WARRANTIES REGARDING THE LICENSED DEKALB PATENT RIGHTS
(INCLUDING, WITHOUT LIMITATION, THE VALIDITY OR SCOPE OF THE LICENSED DEKALB
PATENT RIGHTS) OR THE LICENSED MONSANTO PRODUCTS (INCLUDING, WITHOUT
LIMITATION, THE NON-INFRINGEMENT OF THE LICENSED MONSANTO PRODUCTS ON THIRD
PARTY PATENT RIGHTS) OR OTHERWISE, EXPRESS OR IMPLIED, EITHER IN FACT OR BY
OPERATION OF LAW.
8.03 INDEMNIFICATION:
(a) EXCEPT TO THE EXTENT CAUSED BY MONSANTO'S GROSS
NEGLIGENCE OR WILLFUL MISCONDUCT, DEKALB SHALL DEFEND AND INDEMNIFY MONSANTO
AGAINST, AND HOLD MONSANTO AND ITS EMPLOYEES, DIRECTORS, OFFICERS AND AGENTS
HARMLESS FROM, ANY LOSS, COST, LIABILITY OR EXPENSE (INCLUDING COURT COSTS AND
REASONABLE FEES OF ATTORNEYS AND OTHER PROFESSIONALS) INCURRED FROM ANY CLAIM
ARISING OR ALLEGED TO ARISE OUT OF THE MANUFACTURE, USE, DISTRIBUTION OR SALE
OF ANY LICENSED DEKALB PRODUCT BY DEKALB OR ANY DEKALB LICENSEE, AFFILIATE,
BUSINESS ASSOCIATE, OR INTERNATIONAL ASSOCIATE; PROVIDED, HOWEVER, THAT (I)
DEKALB SHALL HAVE SOLE CONTROL OF SUCH DEFENSE, AND (II) MONSANTO SHALL PROVIDE
NOTICE PROMPTLY TO DEKALB OF ANY ACTUAL OR THREATENED CLAIM OF WHICH MONSANTO
BECOMES AWARE.
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(b) EXCEPT TO THE EXTENT CAUSED BY DEKALB'S GROSS
NEGLIGENCE OR WILLFUL MISCONDUCT, MONSANTO SHALL DEFEND AND INDEMNIFY DEKALB
AGAINST, AND HOLD DEKALB AND ITS EMPLOYEES, DIRECTORS, OFFICERS AND AGENTS
HARMLESS FROM, ANY LOSS, COST, LIABILITY OR EXPENSE (INCLUDING COURT COSTS AND
REASONABLE FEES OF ATTORNEYS AND OTHER PROFESSIONALS) INCURRED FROM ANY CLAIM
ARISING OR ALLEGED TO ARISE OUT OF THE MANUFACTURE, USE, DISTRIBUTION OR SALE
OF ANY LICENSED MONSANTO PRODUCT BY MONSANTO OR ANY MONSANTO LICENSEE,
AFFILIATE, BUSINESS ASSOCIATE, OR INTERNATIONAL ASSOCIATE; PROVIDED, HOWEVER,
THAT (I) MONSANTO SHALL HAVE SOLE CONTROL OF SUCH DEFENSE, AND (II) DEKALB
SHALL PROVIDE NOTICE PROMPTLY TO MONSANTO OF ANY ACTUAL OR THREATENED CLAIM OF
WHICH DEKALB BECOMES AWARE.
8.04 LIMITED LIABILITY: EXCEPT TO THE EXTENT PROVIDED FOR
IN SUBSECTION 8.03 ABOVE, NEITHER PARTY SHALL BE LIABLE TO THE OTHER FOR ANY
LOSS OF PROFITS, LOSS OF BUSINESS, INTERRUPTION OF BUSINESS, INDIRECT, SPECIAL
OR CONSEQUENTIAL DAMAGES OF ANY KIND SUFFERED BY SUCH OTHER PARTY FOR BREACH
HEREOF, WHETHER BASED ON CONTRACT OR TORT CLAIMS OR OTHERWISE, EVEN IF SUCH
PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH LOSS.
SECTION 9 - TERM AND TERMINATION
9.01 TERM: The term of this Agreement shall begin upon the
closing of the Investment Agreement between MONSANTO and DEKALB of even date
hereof (the "Effective Date"), and shall end Ten (10) years thereafter, unless
terminated sooner in accordance with this Section 9. [***] the parties shall
begin [***] for the purpose of extending the Agreement beyond the original Ten
(10) year term.
9.02 TERMINATION OF AGREEMENT FOR MATERIAL BREACH:
(a) Either party may terminate this Agreement upon at
least sixty (60) days written notice to the other party should the other party
commit a material breach of its obligations or be in material default under any
of the provisions of this Agreement, provided that the other party has failed
to cure the breach or default (or, if such breach or default cannot be cured
within the sixty (60) day period, the other party has not taken reasonable
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steps to cure the breach or default) within the same sixty (60) day notice
period.
(b) Notwithstanding a party's right to terminate this
Agreement as a result of a non-cured material breach by the other party, the
non-breaching party shall not be prevented from seeking any other remedy which
may be available to it in equity, including specific performance on the part of
the party in breach.
(c) It shall be considered a material breach to enter
into a collaborative research agreement with a third party which overlaps or
conflicts with the field of a Collaborative Effort undertaken pursuant to the
terms of this Agreement. For that purpose, each Collaborative Effort shall
specifically define the field of the Collaborative Effort, as well as what
related areas overlap or conflict with such field. This Subsection 9.02(c)
shall not be interpreted, however, as precluding either party from obtaining
necessary, reasonable, and customary technical assistance of a nature that does
not impinge upon the core technology of the Collaborative Effort.
(d) The terms of any termination shall be subject to
arbitration under the provisions set forth in the attached Appendix B if
requested by at least one of the parties hereto.
9.03 INSOLVENCY: Either party may terminate this
Agreement if, at any time:
(a) the other party makes an assignment for the benefit
of creditors or admits in writing its inability generally to pay or is
generally not paying its debts as such debts become due;
(b) any decree or order for relief is entered against the
other party under any bankruptcy, reorganization, compromise, arrangement,
insolvency, readjustment of debt, dissolution or liquidation or similar law;
(c) the other party petitions for, applies to any
tribunal for, or consents to, the appointment of, or taking possession by, a
trustee, receiver, custodian, liquidator or similar official, of such other
party or any substantial part of its assets, or commences a voluntary case
under the bankruptcy law of any jurisdiction;
(d) any such petition or application is filed, or any
such proceedings are commenced, against the other party and such other party by
any act indicates its approval thereof, consent thereto or acquiescence
therein, or an order, judgment or decree is entered appointing any such
trustee, receiver, custodian, liquidator or similar official, or approving the
petition in any such proceedings, and such order for relief, order, judgment or
decree remains unstayed and in effect for more than sixty (60) days; or
(e) any order, judgment or decree is entered in any
proceedings against the other party decreeing the dissolution of such other
party and such order, judgment or decree remains unstayed and in effect for
more than sixty (60) days.
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9.04 GOVERNMENT ORDER OR DECREE REQUIRING DIVESTITURE:
Upon issuance of any governmental order or decree requiring
the termination of this Collaboration Agreement, the parties shall be permitted
to terminate this Agreement in accordance with the terms of any such
governmental order or decree in as orderly manner as reasonably practical.
9.05 EFFECTS OF TERMINATION/SURVIVAL:
(a) Expiration or termination of this Agreement shall not
relieve the parties of any obligation accruing prior to or upon such expiration
or termination. Accordingly, Subsections 8.03 and 8.04 and Sections 10 and 11
shall survive expiration or termination of this Agreement and neither party
shall be relieved of any payment obligation that may have accrued prior to or
as the result of such expiration or termination.
(b) Upon expiration of this Agreement, either party shall
have [***] to exercise its right(s) to a license under the provisions of
Subsections 4.03, 4.04 and/or 4.08.
(c) Upon termination under the provisions of Subsection
9.02, the party not in breach shall have [***] to exercise its right(s)
to a license under the provisions of Subsections 4.03, 4.04, and/or 4.08. The
party in breach shall [***]
(d) Upon termination of the Investment Agreement between
MONSANTO and DEKALB of even date hereof before the expiration or termination of
this Agreement because of (1) the issuance by any governmental authority of
any order or decree requiring MONSANTO to terminate the Investment Agreement,
which order or decree resulting from MONSANTO's voluntary action, or (2) the
termination of the Investment Agreement by MONSANTO other than for Cause, as
defined in the Investment Agreement in Subsection 9.1.6,
(i) At DEKALB's option this Agreement [***]
or the term of this Agreement shall be [***] of the period between the
Effective Date and the date on which the Investment Agreement is terminated;
(ii) MONSANTO's share of Value from any on-going
Collaborative Effort shall be [***] and DEKALB's share shall be [***] i.e., if
MONSANTO's share had been [***] it shall be [***], and DEKALB's share shall be
[***]
(iii) to the extent necessary to adjust the revenue
shares, Subsection 5.02 shall automatically be amended as follows:
(a) the Value received with regard to a
Collaborative Effort typically shall be distributed [***] to MONSANTO, [***] to
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DEKALB (Subsection 5.02(a));
(b) the parties may mutually agree, on a
case-by-case basis, that DEKALB may receive [***] or that MONSANTO may receive
[***] with the other party taking the remainder (Subsection 5.02(a)(i));
(c) if the Collaborative Effort also is
an Existing Project of only DEKALB, the parties may mutually agree, on a
case-by-case basis, that DEKALB may receive [***] of the value, and if the
Collaborative Effort also is an Existing Project of only MONSANTO, the parties
may mutually agree, on a case-by-case basis, that MONSANTO may receive [***]
of the value, with the other party taking the remainder in either case
(Subsection 5.02(a)(ii)); and
(iv) any royalty payable to DEKALB as grantee of a
license under Subsection 5.01 shall [***] (Subsection 5.01(d)); any royalty
payable by DEKALB as grantor of a license under Subsection 5.01 shall [***]
(Subsection 5.01(d)).
(e) Upon termination of the Investment Agreement between
MONSANTO and DEKALB of even date hereof before the expiration or termination of
this Agreement because of the issuance by any governmental authority of any
order or decree requiring DEKALB to terminate the Investment Agreement, which
order or decree resulted from DEKALB's voluntary action,
(i) at MONSANTO's option, this Agreement [***]
or the term of this Agreement may be [***] of the period between the Effective
Date and the date on which the Investment Agreement is terminated;
(ii) DEKALB's share of Value from any on-going
Collaborative Effort shall be [***] and MONSANTO's share shall be [***] i.e.,
if DEKALB's share had been [***] it shall be [***] and MONSANTO'S share shall
be [***]
(iii) to the extent necessary to adjust the revenue
shares, Subsection 5.02 shall automatically be amended as follows:
(a) the Value received with regard to a
Collaborative Effort typically shall be distributed [***] to DEKALB, [***] to
MONSANTO (Subsection 5.02(a));
(b) the parties may mutually agree, on a
case-by-case basis, that MONSANTO may receive [***] or that DEKALB may receive
[***] with the other party taking the remainder (Subsection 5.02(a)(i));
(c) if the Collaborative Effort also is
an Existing Project of only MONSANTO, the parties may mutually agree, on a
case-by-case basis, that MONSANTO may receive [***] of the value, and if the
Collaborative
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Effort also is an Existing Project of only DEKALB, the parties may mutually
agree, on a case-by-case basis, that DEKALB may receive [***] of the value,
with the other party taking the remainder in either case (Subsection 5.02(a)
(ii)); and
(iv) any royalty payable to MONSANTO as grantee of
a license under Subsection 5.01 shall [***] (Subsection 5.01(d)); any royalty
payable by MONSANTO as grantor of a license under Subsection 5.01 shall [***]
(Subsection 5.01(d)).
(f) Upon early termination of the Investment Agreement by
MONSANTO with Cause, as defined in the Investment Agreement in Subsection
9.1.6, MONSANTO shall have [***] to exercise its right(s) to a license under
the provisions of Subsections 4.03, 4.04, and/or 4.08. DEKALB shall [***]
SECTION 10 - TITLE AND OWNERSHIP
10.01 OWNERSHIP
(a) Each party's ownership interests established before
the Effective Date of this Agreement shall not be affected by this Agreement.
(b) A party's ownership interests in the Rights resulting
from an Independent Effort shall remain vested in that party.
(c) The parties agree that the legal title to the
intellectual property rights in Rights resulting from a Collaborative Effort
vest in the party selected by the parties at the time the Collaborative Effort
is so identified. The parties agree that each party shall promptly obtain from
each employee involved with the Collaborative Effort an agreement obligating
the employee to assign such rights to the party selected.
(d) The parties agree that, Subsection 10.01(c)
notwithstanding, any and all necessary assignment of rights in the intellectual
property rights in Rights resulting from a Collaborative Effort shall, upon
termination of this Agreement, be recorded in the appropriate patent offices
such that legal title shall be held jointly by MONSANTO and DEKALB. Each party
shall, upon the reasonable request of the other, execute such documents and
take such actions as necessary to effect the assignment of intellectual
property rights as set forth herein.
SECTION 11 - CONFIDENTIALITY
11.01 CONFIDENTIAL INFORMATION: The parties have previously
disclosed, and it is anticipated that it will be necessary, in connection with
their obligations under this Agreement, for DEKALB and MONSANTO to disclose to
each other Confidential Information. The Confidential Information shall
include, but not limited to, information
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disclosed in writing or other tangible form, including samples of materials.
11.02 CONFIDENTIALITY AND LIMITED USE:
(a) With respect to all Confidential Information, both
DEKALB and MONSANTO agree as follows, it being understood that "recipient"
indicates the party receiving the confidential, proprietary information from
the other "disclosing" party. Confidential Information disclosed to the
recipient shall remain the property of the disclosing party and shall be
maintained in confidence by the recipient with the same care and diligence as
the recipient maintains its own Confidential Information. Confidential
Information shall not be disclosed to third parties by the recipient and,
further, shall not be used except for purposes contemplated in this Agreement.
All confidentiality and limited use obligations with respect to the
Confidential Information shall terminate ten (10) years after the termination
date of this Agreement.
(b) Notwithstanding any provision to the contrary, a
party may disclose the Confidential Information of the other party: (i) in
connection with an order of a court or other government body or as otherwise
required by or in compliance with law or regulations; provided that the party
required to disclose provides the other party with notice and takes reasonable
measures to obtain confidential treatment thereof; (ii) in confidence to
recipient's attorneys, accountants, banks and financial sources and its
advisors; or (iii) in confidence, in connection with the sale of substantially
all the business assets to which this Agreement relates, so long as, in each
case, the entity to which disclosure is made is bound to confidentiality on
terms consistent with those set forth herein.
(c) Notwithstanding any provision to the contrary, a
party seeking to make a disclosure to an entity not bound to confidentiality on
terms consistent with those set forth herein shall first provide to the other
party a copy of the material proposed to be disclosed and shall obtain the
consent of the other party before making the disclosure, which consent shall
not be unreasonably withheld.
11.03 EXCEPTIONS: The obligations of confidentiality and limited
use shall not apply to any of the Confidential Information which:
(a) is publicly available by publication or other
documented means or later becomes likewise publicly available through no act
or fault of recipient; or
(b) is already known to recipient before receipt from the
disclosing party, as demonstrated by recipient's written records; or
(c) is made known to recipient by a third party who did
not obtain it directly or indirectly from the disclosing party and who does not
obligate recipient to hold it in confidence; or
(d) is independently developed by the recipient as
evidenced by credible
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written research records of recipient's employees or agents who did not have
access to the disclosing party's Confidential Information. Specific
information should not be deemed to be within any of these exclusions merely
because it is embraced by more general information falling within these
exclusions.
11.04 DISCLOSURES TO PERSONNEL: Recipient agrees to advise those of
its officers, directors, employees, associates, agents, consultants,
Affiliates, Business Associates, and International Associates who become aware
of the Confidential Information, of these confidentiality and limited use
obligations and agrees, prior to any disclosure of Confidential Information to
such individuals or entities, to make them bound by obligations of
confidentiality and limited use of the same stringency as those contained in
this Agreement.
11.05 RETURN OF CONFIDENTIAL INFORMATION: Upon termination of this
Agreement, originals and copies of Confidential Information in written or other
tangible form will be returned to the disclosing party by recipient or
destroyed by recipient. One copy of each document may be retained in the
custody of the recipient's legal counsel solely to provide a record of what
disclosures were made.
11.06 CONFIDENTIAL STATUS OF AGREEMENT: The terms of this Agreement
shall be deemed to be Confidential Information and shall be dealt with
according to the confidentiality requirements of this Section 11. Neither
party will make public disclosures concerning specific terms of this Agreement
without obtaining the prior written consent of the other party, which consent
shall not be unreasonably withheld, and except as may be necessary, in the
opinion of Counsel of the party making such disclosure, to comply with the
requirements of any stock exchange or over-the-counter market on which the
shares of such party may be listed or of any law, governmental regulation or
order. If a party determines that such a disclosure is necessary, it shall
promptly notify the other party so that the other party can obtain confidential
treatment of its Confidential Information.
SECTION 12 - MISCELLANEOUS
12.01 NOTICES: Any notice or other communication required or
permitted to be given by either party under this Agreement shall be given in
writing and shall be effective when delivered, if delivered by hand or by
electronic facsimile or five days after mailing if mailed by registered or
certified mail, postage prepaid and return receipt requested, addressed to each
party at the following addresses or such other address as may be designated by
notice pursuant to this Subsection 12.01:
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If to MONSANTO: Monsanto Company
800 North Lindbergh Boulevard
St. Louis, Missouri 63167
Attention: Robert T. Fraley, Ph.D.
President, Ceregen
Facsimile: (314) 694-7771
with a copy to: Monsanto Company
700 Chesterfield Pkwy North
St. Louis, Missouri 63198
Attention: Patent Counsel, Ceregen
Monsanto Company
Mail Code BB4F
Facsimile: (314) 537-6047
and to: Monsanto Company
700 Chesterfield Pkwy North
St. Louis, Missouri 63198
Attention: William M. Ziegler
Business Director, Corn
and Soybeans
Mail Code BB4D
Facsimile: (314) 537-6047
If to DEKALB: DEKALB Genetics Corporation
3100 Sycamore Road
DeKalb, Illinois 60115
Attention: Richard O. Ryan
President and
Chief Operating Officer
Facsimile: (815) 758-6953
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with a copy to: DEKALB Genetics Corporation
3100 Sycamore Road
DeKalb, Illinois 60115
Attention: John H. Witmer, Jr.
Senior Vice President and
General Counsel
Facsimile: (815) 758-6953
and to: DEKALB Genetics Corporation
62 Maritime Drive
Mystic, Conn. 06355
Attention: Catherine J. Mackey, Ph.D.
Vice President, Research
Facsimile: (860) 572-5241
12.02 PROVISIONS CONTRARY TO LAW: In performing this Agreement, the
parties shall comply with all applicable laws and regulations. Nothing in this
Agreement shall be construed so as to require the violation of any law, and
wherever there is any conflict between any provision of this Agreement and any
law the law shall prevail, but in such event the affected provision of this
Agreement shall be affected only to the extent necessary to bring it within the
applicable law.
12.03 FORCE MAJEURE:
(a) Neither of the parties shall be liable for any
default or delay in performance of any obligation under this Agreement caused
by any of the following: Act of God, war, riot, fire, explosion, accident,
flood, sabotage, compliance with governmental requests, laws, regulations,
orders or actions, national defense requirements or any other event beyond the
reasonable control of such party; or labor trouble, strike, lockout or
injunction (provided that neither of the parties shall be required to settle a
labor dispute against its own best judgment).
(b) The party invoking this Subsection 12.03 shall give
the other party written notice and full particulars of such force majeure
event.
(c) Both MONSANTO and DEKALB shall use reasonable efforts
to mitigate the effects of any force majeure on their respective parts.
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12.04 RELATIONSHIP OF THE PARTIES: Notwithstanding any provision
hereof, for all purposes of this Agreement each party shall be and act as an
independent contractor and not as partner, joint venturer or agent of the other
and shall not bind nor attempt to bind the other to any contract, without the
prior written consent of the party to be bound.
12.05 USE OF NAMES: Unless otherwise required by the terms of this
Agreement, neither party shall use the name of the other in any promotional
materials or advertising without the prior written consent of the other.
12.06 ASSIGNABILITY AND CHANGE IN CONTROL:
(a) The rights acquired herein by DEKALB are not
assignable or transferable in whole or part (by operation of law or otherwise)
to any third party without the prior written consent of MONSANTO, except as
provided in Subsection 10.06(d).
(b) The rights acquired herein by MONSANTO are not
assignable or transferable in whole or part (by operation of law or otherwise)
to any third party without the prior written consent of DEKALB, except as
provided in Subsection 10.06(e).
(c) Any transfer, assignment or delegation made or
attempted in violation of this Subsection 12.06 shall be void ab initio and of
no effect.
(d) Subject to the provisions of Subsection 9.05(b), upon
any change in control of DEKALB (by acquisition, merger, consolidation or
otherwise) resulting in, direct or indirect, ownership of the voting stock of
DEKALB at a level of greater than fifty percent (50%) by a single entity or by
two or more entities acting together or, control as a consequence of a
shareholder agreement, joint venture agreement or other agreement, MONSANTO can
terminate this Agreement within ninety (90) days of receiving notice of such
change, provided however, that any existing Collaborative Efforts shall
continue for one year, unless otherwise mutually agreed by the parties. Upon
any change in control, MONSANTO's payment obligation to DEKALB (or its
successor in interest) shall be adjusted as follows:
(i) DEKALB's share of Value from any on-going
Collaborative Effort shall be [***] and MONSANTO's share shall be [***] i.e., if
DEKALB's share had been [***] it shall be [***] and MONSANTO's share shall be
[***]
(ii) to the extent necessary to adjust the revenue
shares, Subsection 5.02 shall automatically be amended as follows:
(a) the Value received with regard to a
Collaborative Effort typically shall be distributed [***] to DEKALB, [***] to
MONSANTO (Subsection 5.02(a));
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(b) the parties may mutually agree, on a
case-by-case basis, that MONSANTO may receive [***] or that DEKALB may receive
[***] with the other party taking the remainder (Subsection 5.02(a)(i));
(c) if the Collaborative Effort also is
an Existing Project of only MONSANTO, the parties may mutually agree, on a
case-by-case basis, that MONSANTO may receive [***] of the value, and if the
Collaborative Effort also is an Existing Project of only DEKALB, the parties
may mutually agree, on a case-by-case basis, that DEKALB may receive [***] of
the value, with the other party taking the remainder in either case
(Subsection 5.02(a)(ii)); and
(iii) any royalty payable to MONSANTO as grantee of
a license under Subsection 5.01 shall [***] (Subsection 5.01(d)); any royalty
payable by MONSANTO as grantor of a license under Subsection 5.01 shall
[***] (Subsection 5.01(d)). This Subsection 10.06(d) shall not apply to any
such change in control in which Monsanto becomes the controlling party.
(e) Subject to the provisions of Subsection 9.05(b), upon
any change in control of MONSANTO (by acquisition, merger, consolidation or
otherwise) resulting in, direct or indirect, ownership of MONSANTO at a level
of greater than fifty percent (50%) by a single entity or by two or more
entities acting together or, control as a consequence of a shareholder
agreement, joint venture agreement or other agreement, DEKALB can terminate
this Agreement within ninety (90) days of receiving notice of such change,
provided however, that any existing Collaborative Efforts shall continue for
one year, unless otherwise mutually agreed by the parties. . Upon any change
in control, DEKALB's payment obligation to MONSANTO (or its successor in
interest) shall be adjusted as follows:
(i) DEKALB's share of Value from any on-going
Collaborative Effort shall be [***] and MONSANTO's share shall be [***] i.e.,
if DEKALB's share had been [***] it shall be [***] and MONSANTO's share shall
be [***]
(ii) to the extent necessary to adjust the revenue
shares, Subsection 5.02 shall automatically be amended as follows:
(a) the Value received with regard to a
Collaborative Effort typically shall be distributed [***] to DEKALB, [***] to
MONSANTO (Subsection 5.02(a));
(b) the parties may mutually agree, on a
case-by-case basis, that MONSANTO may receive [***] or that DEKALB may receive
[***] with the other party taking the remainder (Subsection 5.02(a)(i));
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(c) if the Collaborative Effort also is
an Existing Project of only MONSANTO, the parties may mutually agree, on a
case-by-case basis, that MONSANTO may receive [***] of the value, and if the
Collaborative Effort also is an Existing Project of only DEKALB, the parties
may mutually agree, on a case-by-case basis, that DEKALB may receive [***] of
the value, with the other party taking the remainder in either case (Subsection
5.02(a)(ii)); and
(iii) any royalty payable to DEKALB as grantee of a
license under Subsection 5.01 [***] (Subsection 5.01(d)); any royalty payable
by DEKALB as grantor of a license under Subsection 5.01 shall [***] (Subsection
5.01(d)).
12.07 ENTIRE AGREEMENT; AMENDMENTS; WAIVER: This 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
supersedes any and all prior agreements, whether written or oral, that may
exist between the parties with respect thereto. Except as otherwise
specifically provided in this Agreement, 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 Agreement shall be
binding unless hereafter made in writing and signed by the party to be bound
and no modification shall be effected by the acknowledgment or acceptance of
documents containing terms or conditions at variance with or in addition to
those set forth in this Agreement. No waiver by any party with respect to any
breach or default or of any right or remedy and no course of dealing or
performance, shall be deemed to constitute a continuing waiver of any other
breach or default or of any right or remedy, unless such waiver be expressed in
writing signed by the party to be bound. Failure of a party to exercise any
right shall not be deemed a waiver of such right or rights in the future.
12.08 CHOICE OF LAW: IT IS THE INTENTION OF THE PARTIES HERETO THAT
ALL QUESTIONS WITH RESPECT TO THE CONSTRUCTION OF THIS AGREEMENT AND THE RIGHTS
AND LIABILITIES OF THE PARTIES HERETO SHALL BE DETERMINED IN ACCORDANCE WITH
THE LAWS OF THE STATE OF DELAWARE APPLICABLE TO BUSINESS ARRANGEMENTS ENTERED
INTO AND PERFORMED ENTIRELY WITHIN THE STATE OF DELAWARE.
12.09 EXPORT CONTROL:
(a) Notwithstanding any other provisions of this
Agreement, DEKALB agrees to make no disclosure or use of any MONSANTO Know-How,
Confidential
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Information, or Rights of MONSANTO furnished or made known to DEKALB pursuant
to this Agreement, except in compliance with the laws and regulations of the
United States of America, including the Export Administration Regulations
promulgated by the Office of Export Administration International Trade
Administration, United States Department of Commerce; and in particular, DEKALB
agrees not to export, directly or indirectly, either
(i) the technical data furnished or made known to
DEKALB pursuant to this Agreement; or
(ii) the "direct product" thereof; or
(iii) any commodity produced using such technical
data to any country or countries for which a validated license is required
unless a validated license is first obtained pursuant to the Export
Administration Regulations. The term "direct product" as used above, is
defined to mean the immediate product (including process and services) produced
directly by the use of the technical data.
(b) Notwithstanding any other provisions of this
Agreement, MONSANTO agrees to make no disclosure or use of any DEKALB Know-How,
Confidential Information, or Rights of DEKALB furnished or made known to
MONSANTO pursuant to this Agreement, except in compliance with the laws and
regulations of the United States of America, including the Export
Administration Regulations promulgated by the Office of Export Administration
International Trade Administration, United States Department of Commerce; and
in particular, MONSANTO agrees not to export, directly or indirectly, either
(i) the technical data furnished or made known to
MONSANTO pursuant to this Agreement; or
(ii) the "direct product" thereof; or
(iii) any commodity produced using such technical data to
any country or countries for which a validated license is required unless a
validated license is first obtained pursuant to the Export Administration
Regulations. The term "direct product" as used above, is defined to mean the
immediate product (including process and services) produced directly by the use
of the technical data.
12.10 MEET AND CONFER: It is the intention of the parties that in
the event any dispute arises under this Agreement, the parties shall first meet
and confer with one another to attempt to negotiate a resolution of such
dispute without recourse to litigation.
12.11 REMEDIES: Except as otherwise expressly stated in this
Agreement, the rights and remedies of a party set forth herein with respect to
failure of the other to comply with the terms of this Agreement (including,
without limitation, rights of full termination of this Agreement) are not
exclusive, the exercise thereof shall not constitute an election of remedies
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and the aggrieved party shall in all events be entitled to seek whatever
additional remedies may be available in law or in equity.
12.12 FEES: Except as otherwise provided herein, each party shall
bear its own legal fees incurred in connection with the transactions
contemplated hereby, provided, however, that if any party to this Agreement
seeks to enforce its rights under this Agreement by legal proceedings or
otherwise, the non-prevailing party shall pay all costs and expenses incurred
by the prevailing party, including, without limitation, all reasonable
attorneys' fees.
12.13 HEADINGS: Headings herein are for convenience of reference
only and shall in no way affect interpretation of this Agreement.
12.14 COUNTERPARTS: This Agreement may be executed in any number of
counterparts with the same effect as if all parties had signed the same
document. All such counterparts shall be deemed an original, shall be construed
together and shall constitute one and the same instrument.
12.15 ARBITRATION: Disputes arising out of Subsections 5.01, 5.03,
5.04 and 9.02 of this Agreement will be finally settled by arbitration
conducted in accordance with the arbitration rules and guidelines outlined in
attached Appendix B. The arbitration will be held in Chicago, Illinois as
promptly as possible at such time as the arbitrator(s) may determine. The
decision of the arbitrator(s) will be final and binding upon the parties
hereto.
12.16 APPENDICES: The appended Appendices and Exhibits form an
integral part of this Agreement.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the date first above written.
MONSANTO COMPANY DEKALB GENETICS CORPORATION
By: Robert T. Fraley By: Bruce P. Bickner
---------------------------- ----------------------------
Robert T. Fraley Bruce P. Bickner
Title: President, Ceregen Title: Chairman and CEO
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