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EXHIBIT 10.4
WHENEVER CONFIDENTIAL INFORMATION IS OMITTED HEREIN (SUCH OMISSIONS ARE DENOTED
BY AN ASTERISK*), SUCH CONFIDENTIAL INFORMATION HAS BEEN SUBMITTED SEPARATELY TO
THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR CONFIDENTIAL
TREATMENT.
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
LICENSE AGREEMENT
(EXCLUSIVE)
Date: July 15, 1993
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TABLE OF CONTENTS
<Table>
<Caption>
Page
PREAMBLE ......................................................................1
ARTICLE 1 - DEFINITIONS........................................................1
ARTICLE 2 - GRANT..............................................................4
ARTICLE 3 - DUE DILIGENCE......................................................5
ARTICLE 4 - ROYALTIES..........................................................6
ARTICLE 5 - REPORTS AND RECORDS................................................7
ARTICLE 6 - PATENT PROSECUTION.................................................9
ARTICLE 7 - INFRINGEMENT......................................................10
ARTICLE 8 - PRODUCT LIABILITY.................................................12
ARTICLE 9 - EXPORT CONTROLS...................................................13
ARTICLE 10 - NON-USE OF NAMES.................................................13
ARTICLE 11 - ASSIGNMENT.......................................................14
ARTICLE 12 - DISPUTE RESOLUTION...............................................14
ARTICLE 13 - TERMINATION......................................................15
ARTICLE 14 - PAYMENTS, NOTICES AND OTHER COMMUNICATIONS.......................16
ARTICLE 15 - MISCELLANEOUS PROVISIONS.........................................17
</Table>
(i)
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PREAMBLE
This Agreement is made and entered into this 15th day July, 1993, (the
"Effective Date") by and between MASSACHUSETTS INSTITUTE OF TECHNOLOGY, a
corporation duly organized and existing under the laws of the Commonwealth of
Massachusetts and having its principal office at 77 Massachusetts Avenue,
Cambridge, Massachusetts 02139, U.S.A. (hereinafter referred to as "M.I.T."),
and METABOLIX, INC., a corporation duly organized under the laws of the
Commonwealth of Massachusetts and having its principal office at 285
Commonwealth Avenue, Boston, Massachusetts 02115, U.S.A. (hereinafter referred
to as "LICENSEE").
WITNESSETH
WHEREAS, M.I.T. is the owner of certain PATENT RIGHTS (as later defined
herein) relating to M.I.T. Case No. 4403, "Method for Producing Novel Polyester
Biopolymers" by Oliver P. Peoples and Anthony J. Sinskey, USSN 566,535, USSN
700,109 and related technology, and has the right to grant licenses under said
PATENT RIGHTS, subject only to a royalty-free, nonexclusive license heretofore
granted to the United States Government.
WHEREAS, M.I.T. desires to have the PATENT RIGHTS utilized in the public
interest and is willing to grant a license thereunder;
WHEREAS, LICENSEE has represented to M.I.T., to induce M.I.T. to enter into
this Agreement, that LICENSEE is knowledgeable with respect to the subject
matter related to the LICENSED PRODUCT(s) (as later defined herein) and/or the
use of the LICENSED PROCESS(es) (as later defined herein) and that it shall
commit itself to a thorough, vigorous and diligent program of exploiting the
PATENT RIGHTS so that public utilization shall result therefrom; and
WHEREAS, LICENSEE desires to obtain a license under the PATENT RIGHTS upon
the terms and conditions hereinafter set forth.
NOW, THEREFORE, in consideration of the premises and the mutual covenants
contained herein, the parties hereto agree as follows:
ARTICLE 1 - DEFINITIONS
For the purposes of this Agreement, the following words and phrases shall
have the following meanings:
1.1 "LICENSEE" shall include a related company of METABOLIX, INC. the
voting stock of which is directly or indirectly at least fifty percent (50%)
owned and controlled by METABOLIX, INC., an organization which directly or
indirectly controls more than fifty percent
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(50%) of the voting stock of METABOLIX, INC. and an organization the majority
ownership of which is directly or indirectly common to the ownership of
METABOLIX, INC.
1.2 "PATENT RIGHTS" shall mean all of the following M.I.T. intellectual
property:
(a) The United States and foreign patents and/or patent applications
and invention disclosures listed in Appendix A;
(b) United States and foreign patents issued from the application and
invention disclosures listed in Appendix A and from divisionals
and continuations of these applications and invention
disclosures;
(c) claims of United States and foreign continuation-in-part
applications and of the resulting patents which are directed to
subject matter specifically described in the United States and
foreign applications and invention disclosures listed in Appendix
A;
(d) claims of all foreign patent applications and of the resulting
patents which are directed to subject matter specifically
described in the United States patents and/or patent applications
and invention disclosures described in (a), (b), (c) or (d)
above; and
(e) any reissues of United States patents described in (a), (b), (c)
or (d) above.
1.3 A "LICENSED PRODUCT" shall mean any product or part thereof which:
(a) is covered in whole or in part by an issued, unexpired valid
claim or a pending claim contained in the PATENT RIGHTS in the
country in which any such product or part thereof is made, used
or sold; or
(b) is manufactured by using a process or is employed to practice a
process which is covered in whole or in part by an issued,
unexpired valid claim or a pending claim contained in the PATENT
RIGHTS in the country in which a LICENSED PROCESS is used or in
which such product or part thereof is used or sold.
1.4 A "LICENSED PROCESS" shall mean any process which:
(a) is covered in whole or in part by an issued, unexpired valid
claim or a pending claim contained in the PATENT RIGHTS in the
country in which such process is used or in which the LICENSED
PRODUCT made thereby is used or sold.
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1.5 "NET SALES" shall mean LICENSEE's (and its sublicensees') billings for
LICENSED PRODUCTS and LICENSED PROCESSES produced hereunder less the sum of the
following:
(a) discounts allowed in amounts customary in the trade;
(b) sales, tariff duties and/or use taxes directly imposed and with
reference to particular sales;
(c) outbound transportation prepaid or allowed; and
(d) amounts allowed or credited on returns.
No deduction shall be made for commissions paid to individuals whether they
be with independent sales agencies or regularly employed by LICENSEE and on its
payroll, or for cost of collections. LICENSED PRODUCTS shall be considered
"sold" when billed out or invoiced. "NET SALES" shall not include LICENSED
PRODUCTS sold for clinical testing, research or development purposes.
Where the LICENSED PRODUCT is a combination product consisting of polymer
whose composition or manufacture is covered by the PATENT RIGHTS plus other
materials which are not covered by the PATENT RIGHTS, the "NET SALES" shall mean
the NET SALES of the full product multiplied by the fully loaded manufacturing
cost of the polymer divided by the total fully loaded manufacturing cost of the
total combination material. When the LICENSED PRODUCT consists of a combination
product consisting of a component made from the polymer, plus other components,
then "NET SALES" shall mean NET SALES of the total product multiplied by the
fully loaded manufacturing cost of the polymer component divided by the fully
loaded manufacturing cost of the total product. By "fully loaded" is meant the
cost of goods sold plus overhead allocated to production and the sale thereof.
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ARTICLE 2 - GRANT
2.1 M.I.T. hereby grants to LICENSEE the worldwide right and license to
make, have made, use, lease and sell the LICENSED PRODUCTS and to practice the
LICENSED PROCESSES to the end of the term for which the PATENT RIGHTS are
granted unless this Agreement shall be sooner terminated according to the terms
hereof.
2.2 LICENSEE agrees that to the extent possible LICENSED PRODUCTS leased
or sold in the United States shall be manufactured substantially in the United
States and that in those cases where domestic manufacture is impractical it will
request appropriate waivers from the Department of Commerce pursuant to 37
C.F.R. Sec. 401.14(i).
2.3 In order to establish a period of exclusivity for LICENSEE, M.I.T.
hereby agrees that it shall not grant any other license to make, have made, use,
lease and sell LICENSED PRODUCTS or to utilize LICENSED PROCESSES during the
term of this agreement.
2.4 M.I.T. reserves the right to practice under the PATENT RIGHTS for its
own noncommercial research purposes.
2.5 M.I.T. further grants to LICENSEE a ninety (90) day first option to
negotiate for an exclusive license to new inventions dominated by the claims of
the PATENT RIGHTS as originally licensed which arise from the laboratory of
Prof. Anthony Sinskey at M.I.T. within four (4) years of the Effective Date of
this Agreement. Such option shall be subject to any rights granted in
sponsorship agreements to sponsors of the research from which any such invention
arises.
2.6 LICENSEE shall have the right to enter into sublicensing agreements
for the rights, privileges and licenses granted hereunder. Upon any termination
of this Agreement, sublicensees' rights shall also terminate, subject to
Paragraph 13.6 hereof.
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2.7 LICENSEE agrees that any sublicenses granted by it shall provide that
the obligations to M.I.T. of Articles 2, 5, 7, 8, 9, 10, 12, 13 and 15 of this
Agreement shall be binding upon the sublicensee as if it were a party to this
Agreement. LICENSEE further agrees to attach copies of these Articles to
sublicense agreements.
2.8 LICENSEE agrees to forward to M.I.T. a copy of any and all sublicense
agreements promptly upon execution by the parties.
2.9 The license granted hereunder shall not be construed to confer any
rights upon LICENSEE by implication, estoppel or otherwise as to any technology
not specifically set forth in Appendix A hereof.
ARTICLE 3 - DUE DILIGENCE
3.1 LICENSEE shall use diligent efforts to bring LICENSED PRODUCTS to
market through a thorough, vigorous and diligent program for exploitation of the
PATENT RIGHTS and to continue active, diligent development and marketing efforts
for LICENSED PRODUCTS throughout the life of this Agreement.
3.2 LICENSEE shall raise a cumulative total of investment capital and/or
research and development funds of at least:
(a) Five Hundred Thousand Dollars ($500,000) within twelve (12)
months from the Effective Date,
(b) Two Million Dollars ($2,000,000) including funds under (a) hereof
within twenty-seven (27) months from the Effective Date,
(c) Five Million Dollars ($5,000,000) including funds under (a) and
(b) hereof within fifty-one (51) months from the Effective Date.
Included in the cumulative investment capital and/or research and
development funds hereunder shall be such funds invested or expanded by a joint
venture in which LICENSEE owns
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at least a 33% interest provided that such finds are used substantially for the
development and marketing of LICENSED PRODUCTS.
3.3 LICENSEE's failure to perform in accordance with Paragraphs 3.1 and
3.2 above shall be grounds for M.I.T. to terminate this Agreement pursuant to
Paragraph 13.3 hereof.
ARTICLE 4 - ROYALTIES
4.1 For the rights, privileges and license granted hereunder, LICENSEE
shall pay royalties to M.I.T. in the manner hereinafter provided to the end of
the term of the PATENT RIGHTS or until this Agreement shall earlier be
terminated:
(a) A License Issue Fee of *, which said License Issue Fee shall be
deemed earned and due in two parts:
(i) * due upon the signing of this Agreement; and
(ii) * due upon the raising of Two Million Dollars ($2,000,000)
in investment capital by LICENSEE.
(b) License Maintenance Fees of * per year payable on the second
anniversary of the Effective Date and on each subsequent
anniversary during the term of this Agreement; provided, however,
that Running Royalties subsequently due on NET SALES for each
said year, if any, shall be creditable against the License
Maintenance Fee for said year. License Maintenance Fees paid in
excess of Running Royalties shall not be creditable to Running
Royalties for future years.
(c) * of the NET SALES of LICENSED PRODUCTS and LICENSED PROCESSES by
LICENSEE.
(d) A share of sublicensing revenue received by LICENSEE equal to:
(i) * if only the PATENT RIGHTS are sublicensed.
(ii) Where the sublicensee revenue includes revenue received for
PATENT RIGHTS sublicensed in conjunction with products
and/or substantial technology developed by LICENSEE, * up to
the time LICENSEE has raised Five Hundred Thousand Dollars
($500,000) as provided in Section 3.2(a) hereof, thereafter
* up to the time LICENSEE has raised Two Million Dollars
($2,000,000) as provided in Section 3.2(b) hereof and
thereafter * for the remaining term of this Agreement.
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In no case shall the revenue paid to M.I.T. for each sublicense
be less than * of the sales value of the LICENSED PRODUCTS made,
used or sold by that sublicensee.
(e) Shares of common stock of LICENSEE equal to * of the outstanding
common and preferred shares of LICENSEE at the completion of the
first round of equity of investment.
(f) ANTIDILUTION: If, following the first round of equity funding,
LICENSEE issues additional shares of stock such that M.I.T.'s
total share of outstanding stock falls below *, then LICENSEE
shall grant to M.I.T. additional shares such that M.I.T.'s
fraction of total outstanding shares remains at * until a total
of Four Million Dollars ($4,000,000) is invested in LICENSEE.
Thereafter, no additional shares shall be due to M.I.T., provided
that in subsequent rounds of financing, M.I.T. shall have the
right to invest in additional shares, on a PRO RATA basis, at the
same price as is granted to other investors holding common or
preferred stock.
4.2 All payments due hereunder shall be paid in full, without deduction of
taxes or other fees which may be imposed by any government and which shall be
paid by LICENSEE.
4.3 No multiple royalties shall be payable because any LICENSED PRODUCT,
its manufacture, use, lease or sale are or shall be covered by more than one
PATENT RIGHTS patent application or PATENT RIGHTS patent licensed under this
Agreement.
4.4 Royalty payments shall be paid in United States dollars in Cambridge,
Massachusetts, or at such other place as M.I.T. may reasonably designate
consistent with the laws and regulations controlling in any foreign country. If
any currency conversion shall be required in connection with the payment of
royalties hereunder, such conversion shall be made by using the exchange rate
prevailing at the Chase Manhattan Bank (N.A.) on the last business day of the
calendar quarterly reporting period to which such royalty payments relate.
ARTICLE 5 - REPORTS AND RECORDS
5.1 LICENSEE shall keep full, true and accurate books of account
containing all particulars that may be necessary for the purpose of showing the
amounts payable to M.I.T.
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hereunder. Said books of account shall be kept at LICENSEE's principal place of
business or the principal place of business of the appropriate division of
LICENSEE to which this Agreement relates. Said books and the supporting data
shall be open at all reasonable times for three (3) years following the end of
the calendar year to which they pertain, to the inspection of M.I.T. or its
agents for the purpose of verifying LICENSEE's royalty statement or compliance
in other respects with this Agreement. Should such inspection lead to the
discovery of a greater than Ten Percent (10%) discrepancy in reporting, LICENSEE
agrees to pay the full cost of such inspection.
5.2 LICENSEE, within sixty (60) days after December 31 of each year prior
to the first commercial sale of a LICENSED PRODUCT and sixty days after March
31, June 30, September 30 and December 31, of each year after the first
commercial sales of a LICENSED PRODUCT, shall deliver to M.I.T. true and
accurate reports, giving such particulars of the business conducted by LICENSEE
during the preceding three-month period under this Agreement as shall be
pertinent to a royalty accounting hereunder. These shall include at least the
following:
(a) number of LICENSED PRODUCTS manufactured and sold by LICENSEE;
(b) total billings for LICENSED PRODUCTS manufactured and sold by
LICENSEE;
(c) accounting for all LICENSED PROCESSES used or sold by LICENSEE;
(d) deductions applicable as provided in Paragraph 1.5;
(e) total royalties due; and
(f) names and addresses of all sublicensees of LICENSEE.
LICENSEE shall endeavor to obtain similar information from its sublicensees
and will provide such information which is obtained to M.I.T.
5.3 With each such report submitted, LICENSEE shall pay to M.I.T. the
royalties due and payable under this Agreement. If no royalties shall be due,
LICENSEE shall so report.
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5.4 On or before the ninetieth (90th) day following the close of
LICENSEE's fiscal year, LICENSEE shall provide M.I.T. with LICENSEE's certified
financial statements for the preceding fiscal year including, at a minimum, a
Balance Sheet and an Operating Statement.
5.5 The royalty payments set forth in this Agreement and amounts due under
Article 6 shall, if overdue, bear interest until payment at a per annum rate Two
Percent (2%) above the prime rate in effect at the Chase Manhattan Bank (N.A.)
on the due date. The payment of such interest shall not foreclose M.I.T. from
exercising any other rights it may have as a consequence of the lateness of any
payment.
ARTICLE 6 - PATENT PROSECUTION
6.1 Throughout the term of this Agreement, LICENSEE, at its own expense,
shall have the right, but shall not be obligated, to file such United States
and/or foreign patent applications covering any patentable invention included
within the Patent Rights; to prosecute and defend such applications against
third party oppositions; and upon grant of any Letters Patent covering
inventions included within the Patent Rights, to maintain such Letters Patent in
force. LICENSEE agrees to seek strong, broad claims in the best interest of
M.I.T. and shall not abandon the subject matter of any substantive claim without
the permission of M.I.T., such permission not to be unreasonably withheld. If
LICENSEE elects not to file or prosecute such applications or maintain such
Letters Patent, LICENSEE shall so notify M.I.T., in which event M.I.T. shall
have the right to file or prosecute such applications and to maintain such
Letters Patent.
6.2 Payment of all out-of-pocket fees and costs relating to the filing,
prosecution, and maintenance of the PATENT RIGHTS shall be the responsibility of
LICENSEE, whether such
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fees and costs were incurred before or after the date of this Agreement. Payment
for out-of-pocket costs incurred by M.I.T. prior to the Effective Date shall be
made in three parts:
(a) Twenty-Five Percent (25%) on or before a date three (3) months
from the Effective Date of this Agreement;
(b) Twenty-Five Percent (25%) on or before a date nine (9) months
from the Effective Date of this Agreement;
(c) The remaining Fifty Percent (50%) on or before a date fifteen
(15) months from the Effective Date of this Agreement,
Patenting costs incurred by M.I.T. after the Effective Date of this
Agreement shall be paid within sixty (60) days of invoicing by M.I.T.
ARTICLE 7 - INFRINGEMENT
7.1 LICENSEE shall inform M.I.T. promptly in writing of any alleged
infringement of the PATENT RIGHTS by a third party and of any available evidence
thereof.
7.2 During the term of this Agreement, LICENSEE shall have the right, but
shall not be obligated, to prosecute at its own expense any such infringements
of the PATENT RIGHTS and, in furtherance of such right, M.I.T. hereby agrees
that LICENSEE may join M.I.T. as a party plaintiff in any such suit, without
expense to M.I.T. The total cost of any such infringement action commenced or
defended solely by LICENSEE shall be borne by LICENSEE, LICENSEE may, for such
purposes, use the name of M.I.T. as party plaintiff; provided, however, that
such right to bring an infringement action shall remain in effect only for so
long as the license granted herein remains exclusive. No settlement, consent
judgement or other voluntary final disposition of the suit may be entered into
without the consent of M.I.T. which consent shall not unreasonably be withheld.
LICENSEE shall indemnify M.I.T. against any order for costs that may be made
against M.I.T. in proceedings commenced and defended solely by LICENSEE.
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7.3 In the event that LICENSEE shall undertake the enforcement and/or
defense of the PATENT RIGHTS by litigation, LICENSEE may withhold up to * of the
royalties otherwise thereafter due M.I.T. hereunder and apply the same toward
reimbursement of up to * of LICENSEE's expenses, including reasonable attorneys'
fees, in connection therewith. Any recovery of damages by LICENSEE for any such
suit shall be applied first in satisfaction of any unreimbursed expenses and
legal fees of LICENSEE relating to the suit, and next toward reimbursement of
M.I.T. for any royalties past due or withheld and applied pursuant to this
Article VII. The balance remaining from any such recovery attributable to
damages for lost sales shall be divided according to the royalty percentages set
forth in Section 4.1; any remaining balance shall be paid to LICENSEE.
7.4 If within six (6) months after having been notified of any alleged
infringement, LICENSEE shall have been unsuccessful in persuading the alleged
infringer to desist and shall not have brought and shall not be diligently
prosecuting an infringement action, or if LICENSEE shall notify M.I.T. at any
time prior thereto of its intention not to bring suit against any alleged
infringer, then, and in those events only, M.I.T. shall have the right, but
shall not be obligated, to prosecute at its own expense any infringement of the
PATENT RIGHTS, and, in furtherance of such right, LICENSEE hereby agrees that
M.I.T. may include LICENSEE as a party plaintiff in any such suit, without
expense to LICENSEE. The total cost of any such infringement action commenced or
defended solely by M.I.T. shall be borne by M.I.T., and M.I.T. shall keep any
recovery or damages for past infringement derived therefrom.
7.5 In the event that a declaratory judgment action alleging invalidity or
noninfringement of any of the PATENT RIGHTS shall be brought against LICENSEE,
M.I.T., at
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its option, shall have the right, within sixty (60) days after commencement of
such action, to join in the defense of the action at its own expense.
7.6 In any infringement suit as either party may institute to enforce the
PATENT RIGHTS pursuant to this Agreement, the other party hereto shall, at the
request and expense of the party initiating such suit, cooperate in all respects
and, to the extent possible, have its employees testify when requested and make
available relevant records, papers, information, samples, specimens and the
like.
7.7 LICENSEE, during the period of this Agreement, shall have the sole
right in accordance with the terms and conditions herein to sublicense any
alleged infringer for future use of the PATENT RIGHTS.
ARTICLE 8 - PRODUCT LIABILITY
8.1 LICENSEE shall at all times during the term of this Agreement and
thereafter, indemnify, defend and hold M.I.T., its trustees, officers, employees
and affiliates, harmless against all claims and expenses, including legal
expenses and reasonable attorneys' fees, arising out of the death of or injury
to any person or persons or out of any damage to property and against any other
claim, proceeding, demand, expense and liability of any kind whatsoever
resulting from the production, manufacture, sale, use, lease, consumption or
advertisement of the LICENSED PRODUCT(s) and/or LICENSED PROCESS(es) or arising
from any obligation of LICENSEE hereunder.
8.2 Prior to the first use of a LICENSED PRODUCT on humans, LICENSEE shall
obtain and carry in full force and effect liability insurance which shall
protect LICENSEE and M.I.T. in regard to events covered by Paragraph 8.1 above.
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8.3 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, M.I.T.
MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS
OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE, AND VALIDITY OF PATENT RIGHTS CLAIMS, ISSUED OR
PENDING. NOTHING IN THIS AGREEMENT SHALL BE CONSTRUED AS A REPRESENTATION MADE
OR WARRANTY GIVEN BY M.I.T. THAT THE PRACTICE BY LICENSEE OF THE LICENSE GRANTED
HEREUNDER SHALL NOT INFRINGE THE PATENT RIGHTS OF ANY THIRD PARTY.
ARTICLE 9 - EXPORT CONTROLS
It is understood that M.I.T. is subject to United States laws and
regulations controlling the export of technical data, computer software,
laboratory prototypes and other commodities (including the Arms Export Control
Act, as amended and the Export Administration Act of 1979), and that its
obligations hereunder are contingent on compliance with applicable United States
export laws and regulations. The transfer of certain technical data and
commodities may require a license from the cognizant agency of the United States
Government and/or written assurances by LICENSEE that LICENSEE shall not export
data or commodities to certain foreign countries without prior approval of such
agency. M.I.T. neither represents that a license shall not be required not that,
if required, it shall be issued.
ARTICLE 10 - NON-USE OF NAMES
Except as required by law, LICENSEE shall not use the names or trademarks
of the Massachusetts Institute of Technology, nor any adaptation thereof, nor
the names of any of its employees, in any advertising, promotional or sales
literature without prior written consent
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obtained from M.I.T., or said employee, in each case, except that LICENSEE may
state that it is licensed by M.I.T. under one or more of the patents and/or
applications comprising the PATENT RIGHTS. LICENSEE may, however, use the name
of Oliver P. Peoples, Anthony J. Sinskey, and/or any other employee of M.I.T.
who is a consultant or member of an advisory board of LICENSEE, with their
permission, and provided, also, that their affiliation with LICENSEE is
identified.
ARTICLE 11 - ASSIGNMENT
This Agreement is not assignable, except in the case where LICENSEE
transfers its business relating to the subject matter hereof or transfers a
subsidiary of LICENSEE, or a joint venture in which LICENSEE is a participant,
or all of any other entity in which LICENSEE has a controlling interest,
whereupon transferee shall acquire all of LICENSEE's benefits and obligations
hereunder. Any other assignment shall be void.
ARTICLE 12 - DISPUTE RESOLUTION
12.1 Except for the right of either party to apply to a court of competent
jurisdiction for a temporary restraining order, a preliminary injunction or
other equitable relief to preserve the status quo or prevent irreparable harm,
any and all claims, disputes or controversies arising under, out of or in
connection with the Agreement, including any dispute relating to patent validity
or infringement, which the parties shall be unable to resolve within one hundred
and twenty (120) days shall be mediated in good faith. The party raising such
dispute shall promptly advise the other party of such claim, dispute or
controversy in a writing which describes in reasonable detail the nature of such
dispute. By not later than ten (10) business days after the recipient has
received such notice of dispute, each party shall have selected for itself a
representative who shall have the authority to bind such party, and shall
additionally have advised the other party in writing of the
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name and title of such representative. By not later than twenty (20) business
days after the date of such notice of dispute, such representatives shall
schedule a date for a mediation hearing with the Cambridge Dispute Settlement
Center or Endispute Inc. in Cambridge, Massachusetts. The parties shall enter
into good faith mediation and shall share the costs equally. If the
representatives of the parties have not been able to resolve the dispute within
thirty (30) business days after such mediation hearing, the parties shall have
the right to pursue any other remedies legally available to resolve such dispute
in either the Courts of the Commonwealth of Massachusetts or in the United
States District Court for the District of Massachusetts, to whose jurisdiction
for such purposes M.I.T. and LICENSEE each hereby irrevocably consents and
submits.
12.2 Notwithstanding the foregoing, nothing in this Article shall be
construed to waive any rights or timely performance of any obligations existing
under this Agreement.
ARTICLE 13 - TERMINATION
13.1 If LICENSEE shall cease to carry on its business, this Agreement shall
terminate upon notice by M.I.T., except as provided in Article 11.
13.2 Should LICENSEE fail to make any payment whatsoever due and payable to
M.I.T. hereunder, M.I.T. shall have the right to terminate this Agreement
effective on sixty (60) days' notice, unless LICENSEE shall make all such
payments to M.I.T. within said sixty (60) day period. Upon the expiration of the
sixty (60) day period, if LICENSEE shall not have made all such payments to
M.I.T., the rights, privileges and license granted hereunder shall automatically
terminate.
13.3 Upon any material breach or default of this Agreement by LICENSEE,
other than those occurrences set out in Paragraphs 13.1 and 13.2 hereinabove,
which shall always take
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precedence in that order over any material breach or default referred to in this
Paragraph 13.3, M.I.T. shall have the right to terminate this Agreement and the
rights, privileges and license granted hereunder effective on one hundred and
twenty (120) days' notice to LICENSEE. Such termination shall become
automatically effective unless LICENSEE shall have cured any such material
breach or default prior to the expiration of the one hundred and twenty (120)
day period.
13.4 LICENSEE shall have the right to terminate this Agreement at any time
on six (6) months' notice to M.I.T., and upon payment of all amounts due M.I.T.
through the effective date of the termination.
13.5 Upon termination of this Agreement for any reason, nothing herein
shall be construed to release either party from any obligation that matured
prior to the effective date of such termination. LICENSEE and any sublicensee
thereof may, however, after the effective date of such termination, sell all
LICENSED PRODUCTS, and complete LICENSED PRODUCTS in the process of manufacture
at the time of such termination and sell the same, provided that LICENSEE shall
pay to M.I.T. the Running Royalties thereon as required by Article 4 of this
Agreement and shall submit the reports required by Article 5 hereof on the sales
of LICENSED PRODUCTS.
13.6 Upon termination of this Agreement for any reason, any sublicensee not
then in default shall have the right to seek a license from M.I.T. M.I.T. agrees
to negotiate such licenses in good faith under reasonable terms and conditions.
ARTICLE 14 - PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
Any payment, notice or other communication pursuant to this Agreement shall
be sufficiently made or given on the date of mailing if sent to such party by
certified first class mail,
* CONFIDENTIAL TREATMENT REQUESTED
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postage prepaid, addressed to it at its address below or as it shall designate
by written notice given to the other party:
In the case of M.I.T.:
Director
Technology Licensing Office
Massachusetts Institute of Technology
Room E32-300
Cambridge, Massachusetts 02139
In the case of LICENSEE:
President
Metabolix, Inc.
285 Commonwealth Ave.
Boston, MA 02115
ARTICLE 15 - MISCELLANEOUS PROVISIONS
15.1 This Agreement shall be construed, governed, interpreted and applied
in accordance with the laws of the Commonwealth of Massachusetts, U.S.A., except
that questions affecting the construction and effect of any patent shall be
determined by the law of the country in which the patent was granted.
15.2 The parties hereto acknowledge that this Agreement sets forth the
entire Agreement and understanding of the parties hereto as to the subject
matter hereof, and shall not be subject to any change or modification except by
the execution of a written instrument subscribed to by the parties hereto.
15.3 The provisions of this Agreement are severable, and in the event that
any provisions of this Agreement shall be determined to be invalid or
unenforceable under any controlling body of the law, such invalidity or
unenforceability shall not in any way affect the validity or enforceability of
the remaining provisions hereof.
* CONFIDENTIAL TREATMENT REQUESTED
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15.4 The failure of either party to assert a right hereunder or to insist
upon compliance with any term or condition of this Agreement shall not
constitute a waiver of that right or excuse a similar subsequent failure to
perform any such term or condition by the other party.
IN WITNESS WHEREOF, the parties have duly executed this Agreement the day
and year set forth below.
MASSACHUSETTS INSTITUTE OF
TECHNOLOGY
By /s/ J.D. Litster
-------------------------------
Name J.D. Litster
-----------------------------
Title Vice President for Research
----------------------------
Date July 15, 1993
-----------------------------
METABOLIX, INC.
By /s/ Edward M. Muller
-------------------------------
Name Edward M. Muller
-----------------------------
Title Chief Executive Officer
----------------------------
Date 7/15/93
-----------------------------
* CONFIDENTIAL TREATMENT REQUESTED
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APPENDIX A - PATENT RIGHTS
UNITED STATES PATENT RIGHTS
M.I.T. Case No. 4403
"Method for Producing Novel Polyester Biopolymers"
By Oliver P. Peoples and Anthony J. Sinskey
USSN 566,535 08/13/90
USSN 700,109 05/08/91
USSN 944,488 09/14/92
USSN 944,839 09/14/92
USSN 944,881 09/14/92
Application Filed 06/03/93
FOREIGN PATENT RIGHTS
Japan application filed 07/10/90
EPC SN 88908449.7 filed 07/10/90
CANADA filed 07/10/90
INVENTION DISCLOSURES
M.I.T. Case No. 6113
"Polymerase Technology for the Production of Long Chain and Short Chain
Polymers"
By: Tillman Gerngross, Oliver P. Peoples, Anthony J. Sinskey and Simon F.
Williams
M.I.T. Case No. 5977
"Antibodies to A. eutrophus H16 PHB Synthase"
By: Anthony J. Sinskey and Oliver P. Peoples
M.I.T. Case No. 6010
"Use of PHA Polymerases to Detect, Modify or Control Formation PHA's in
Plants, Animals or Other Biological Systems"
By: Oliver P. Peoples and Anthony J. Sinskey
M.I.T. Case No. 6086
"Anti-Short-Chain Polyhydroxyalkanoate Monoclonal Antibodies"
By: Oliver P. Peoples, Anthony J. Sinskey and Simon F. Williams
* CONFIDENTIAL TREATMENT REQUESTED
19
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MASSACHUSETTS INSTITUTE OF TECHNOLOGY
28 CARLTON STREET, ROOM E32-300
CAMBRIDGE, MA 02142-1324
TECHNOLOGY LICENSING OFFICE TELEPHONE: (617) 253-8088
FACSIMILE: (617) 258-8790
TELEX: 921473 MIT CAM
August 10, 1993
Mr. Edward M. Muller
Metabolix Inc.
P.O. Box 695
Cambridge, MA 02142
LETTER OF AMENDMENT (FIRST AMENDMENT)
Dear Ed;
This is in response to your letter of July 21 concerning the
M.I.T./Metabolix License Agreement dated July 15, 1993.
We hereby recognize that the following M.I.T. Cases
No. 5977
"Antibodies to A. EUTROPHUS H16 PHB Synthase"
By Anthony J. Sinskey and Oliver P. Peoples
No. 6010
"Use of PHA Polymerases to Detect, Modify or Control Formation PHA's in
Plants, Animals or Other Biological Systems"
By Oliver P. Peoples and Anthony J. Sinskey
No. 6086
"Anti-Short-Chain Polyhydroxyalkanoate Monoclonal Antibodies"
By Oliver P. Peoples, Anthony J. Sinskey, and Simon F. Williams
were waived by M.I.T. to the inventors and are therefore no longer the property
of M.I.T.
* CONFIDENTIAL TREATMENT REQUESTED
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This letter therefore amends the License Agreement to remove these cases
from the PATENT RIGHTS of Appendix A.
Please sign and return one copy of this letter acknowledging this Amendment
for Metabolix.
Sincerely,
/s/ Lita L. Nelson
Lita L. Nelsen
Director
LLN/ak
5977.6010.6086.Metabolix.agt.810
ACKNOWLEDGED by:
METABOLIX, INC.
By: /s/Edward M. Muller
----------------------------
Name: Edward M. Muller
----------------------------
Title: Chief Executive Officer
----------------------------
Date: August 23, 1993
----------------------------
* CONFIDENTIAL TREATMENT REQUESTED
21
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SECOND AMENDMENT
This Second Amendment with the effective date of March 6, 1995 is to the License
Agreement dated July 15, 1993, between MASSACHUSETTS INSTITUTE OF TECHNOLOGY and
METABOLIX, INC.
The parties thereto now further agree as follows:
1. The PATENT RIGHTS of M.I.T. Case 6726 "Overproduction of Soluble PHA
Synthase" by Oliver P. Peoples, et al., shall be jointly owned by the parties.
Inventor Oliver P. Peoples, an employee of Metabolix, shall assign his rights in
the invention jointly to M.I.T. and Metabolix, recognizing that his work on this
invention was performed at both institutions. As of the date of this amendment,
these PATENT RIGHTS consist of:
U.S.S.N. 290131, Filed 08/12/94
2. M.I.T.'s rights in the PATENT RIGHTS of this case shall be added to the
PATENT RIGHTS of the License Agreement, thereby granting Metabolix an exclusive
license to these PATENT RIGHTS.
3. Metabolix shall reimburse M.I.T. for all of its out-of-pocket costs incurred
for filing and prosecution of these PATENT RIGHTS.
4. After execution of this Amendment, Metabolix shall assume responsibility for
prosecution of M.I.T. Case 6726, at its own expense, keeping M.I.T. informed of
its actions. M.I.T. agrees that Metabolix may abandon all or a portion of the
PATENT RIGHTS at Metabolix's own discretion.
Agreed to for:
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
By: /s/Lita L. Nelson
-----------------------------------
Name: Lita L. Nelson
-----------------------------------
Title: Director, Technology Licensing Office
-------------------------------------
Date: March 31, 1995
-----------------------------------
METABOLIX, INC.
By: /s/ Edward M. Muller
---------------------
Name: Edward M. Muller
---------------------
Title: President
---------------------
Date: March 14, 1993
---------------------
* CONFIDENTIAL TREATMENT REQUESTED
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THIRD AMENDMENT
This Amendment with the effective date of March 6, 1995 is to the License
Agreement dated July 15, 1993 between MASSACHUSETTS INSTITUTE OF TECHNOLOGY and
METABOLIX, INC.
The parties thereto now further agree as follows:
1. The PATENT RIGHTS of M.I.T. Case 6867 Polyhydroxyalkanoates of Higher
Molecular Weight and Control of the Molecular Weight of Polyhydroxyalkanoates by
Modulation of Polyhydroxyalkanoate Synthase by Chokyun Rha, Anthony J. Sinskey,
and K.D. Snell shall be added to the PATENT RIGHTS of the License Agreement
under all the terms and conditions of the License Agreement.
2. Metabolix shall reimburse M.I.T. for all costs incurred in the filing,
prosecution and maintenance of the PATENT RIGHTS of this case. M.I.T. shall
consult with Metabolix on foreign filing of the PATENT RIGHTS of this case and
shall file and prosecute foreign patents only upon Matabolix's request.
4. Metabolix shall pay to M.I.T. a license issue fee of * for Case 6867. No
additional license maintenance fees or royalties shall be due other than those
specified in the License Agreement.
Agreed to for:
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
By: /s/Lita L. Nelson
-----------------------------------
Name: Lita L. Nelson
-----------------------------------
Title: Director, Technology Licensing Office
-------------------------------------
Date: March 31, 1995
-----------------------------------
METABOLIX, INC.
By: /s/ Edward M. Muller
---------------------
Name: Edward M. Muller
---------------------
Title: President
---------------------
Date: March 14, 1993
---------------------
* CONFIDENTIAL TREATMENT REQUESTED
23
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FOURTH AMENDMENT
This Fourth Amendment, effective as of the date set forth above the
signatures of the patties below, amends the License Agreement dated July 15,
1993, as amended ("7/15/93 LICENSE AGREEMENT") between the Massachusetts
Institute of Technology ("M.I.T.") and Metabolix, Inc. ("LICENSEE").
WHEREAS, LICENSEE and M.I.T. wish to modify the provisions of the 7/15/93
LICENSE AGREEMENT.
NOW, THEREFORE, in consideration of the premises and mutual covenants
contained herein, the parties hereby agree to modify the 7/15/93 LICENSE
AGREEMENT as follows:
1. Section 2.6 shall be deleted and replaced with the following:
LICENSEE shall have the right to enter into sublicensing agreements for the
rights, privileges and licenses granted hereunder. In addition, LICENSEE may
grant any sublicensee the right to sublicense to third parties any or all of the
rights, privileges and licenses granted to such sublicensee and such third party
sublicenses may also include the right to sublicense.
Upon any termination of this Agreement, the rights of all sublicensees
shall also terminate, subject to Paragraph 13.6 hereof.
2. Section 13.6 shall be deleted and replaced with the following:
Upon termination of this Agreement for any reason, any of LICENSEE's direct
sublicensees that are not then in default shall have the right to seek a license
from M.I.T. M.I.T. agrees to negotiate such licenses in good faith under
reasonable terms and conditions. Notwithstanding the foregoing, should Tepha,
Inc. request a license, M.I.T. hereby agrees to grant such a license under terms
and conditions no less favorable as a whole than those granted to Tepha, Inc. by
LICENSEE.
3. The final paragraph of Section 4.1(d) shall be deleted and replaced
with the following:
The royalties due under this Section 4.1(d) shall apply to revenue received
by LICENSEE from any and all sublicenses, regardless of whether the sublicense
is granted by LICENSEE, or by any sublicensee or any of their sublicensees. In
no case shall the revenue paid to M.I.T. for each sublicense be less than * of
the sales value of the LICENSED PRODUCTS made, used or sold by that sublicensee.
* CONFIDENTIAL TREATMENT REQUESTED
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IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed under seal by their duly authorized representatives.
THE EFFECTIVE DATE OF THIS FOURTH AMENDMENT IS SEPTEMBER 29, 2002.
MASSACHUSETTS INSTITUTE OF METABOLIX, INC.
TECHNOLOGY
By: /s/Lita L. Nelson By: /s/James J. Barber
Name: Lita L. Nelson Name: James J. Barber
Title: Director, Technology Licensing Office Title: President
* CONFIDENTIAL TREATMENT REQUESTED
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FIFTH AMENDMENT
This Fifth Amendment, effective as of July 6, 2005, pertains to the
Exclusive Patent License Agreement, effective on July 15, 1993, by and between
the Massachusetts Institute of Technology ("M.I.T.") and Metabolix, Inc.
("COMPANY").
WHEREAS, COMPANY now wishes the License Agreement to include only M.I.T.
case numbers 4403 ("Genes Encoding B-Ketothiolase And Acetoacetyl-Coa
Reductase,") and 6867 ("Polyhydroxyalkanoates Of Higher Molecular Weight And
Control Of The Molecular Weight Of Polyhydroxyalkanoates By Modulation Of
Polyhydroxyalkanoate Synthase Activity");
WHEREAS, COMPANY therefore wishes to remove from the License Agreement
M.I.T case numbers 6113, "Polymerase Technology For The Production Of Long Chain
And Short Chain Polyesters" and 6726, "Overexpression And Purification Of The
Soluble Polyhydroxyalkanoate Synthase From Alcaligenes Eutrophus Evidence For A
Required Post-Translational Modification For Catalytic Activity";
NOW, THEREFORE, M.I.T. and COMPANY hereby agree to modify the Exclusive
Patent License Agreement as follows:
M.I.T. case numbers 6113 and 6726 are removed from the Agreement, and
COMPANY is not responsible for costs incurred on these cases after July 6, 2005.
All other terms and conditions of the Exclusive Patent License Agreement shall
remain unchanged.
THE AMENDMENT EFFECTIVE DATE IS JULY 6, 2005.
Agreed to for:
MASSACHUSETTS INSTITUTE OF METABOLIX, INC.
TECHNOLOGY
By: /s/Lita L. Nelson By: /s/James J. Barber
Name: Lita L. Nelson Name: James J. Barber
Title: Director, Technology Licensing Office Title: President
* CONFIDENTIAL TREATMENT REQUESTED
26