BRASSICA LICENSE AND RESEARCH AGREEMENT
This Agreement is between DowElanco Canada (hereinafter DEC) a Canadian
Corporation and Mycogen Corporation (hereinafter Mycogen), a California
Corporation.
WHEREAS Mycogen owns certain rights to i) BACILLUS THURINGIENSIS technology,
ii) BACILLUS THURINGIENSIS patents and patent applications, iii) owns
BRASSICA germplasm, which is listed in Appendix A, and can further develop
BRASSICA germplasm;
WHEREAS DEC is interested in having another party develop BRASSICA germplasm
for its use;
WHEREAS, the parties have previously entered into a Memorandum of
Understanding dated March 13, 1996 for an oilseed BRASSICA program to develop
improved cultivars and incorporate insect resistance traits based on use of
BACILLUS THURINGIENSIS technology;
WHEREAS, the parties recognize that certain basic assumptions and facts which
the BRASSICA program was based upon have changed,
NOW THEREFORE, in consideration of the mutual covenants and agreements set
forth below, the parties covenant and agree as follows:
ARTICLES
ARTICLE I - DEFINITIONS
SECTION 1.01 BRASSICA: "BRASSICA" means species, germplasm and cultures of
OILSEED BRASSICA, including but not limited to BRASSICA NAPUS, BRASSICA RAPA,
BRASSICA CARINATA, BRASSICA JUNCEA and SINAPIS ALBA.
SECTION 1.02 Bt PROGRAM VARIETIES: "Bt Program Varieties" means Program
Varieties which have incorporated Bt Traits.
SECTION 1.03 Bt VARIETIES: "Bt Varieties" means Varieties which have
incorporated Bt Traits.
SECTION 1.04 Bt TRAITS: "Bt Traits" means BACILLUS THURINGIENSIS genes or
transgenic plant containing BT genes (events) developed from the
Pioneer/Mycogen Bt Collaboration, developed solely by Mycogen or developed by
Mycogen and another collaborator, and any Bt genes or events which Mycogen
may have access to through licenses with third-parties, but only to the
extent such genes are available for sublicensing to DEC for purposes of this
Agreement. Bt Traits with activity against Flea Beetle (primary target) and
Bertha Armyworm/Diamondback Moth (secondary target) are included, as are
other Bt Traits for other targets, which may be identified by DEC to Mycogen
in writing from time to time.
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SECTION 1.05 CONFIDENTIAL INFORMATION: "Confidential Information" means
either party's information and includes, but is not limited to, all
information contained in unpublished patent application(s), Developmental
Targets, Product Goals and any information related thereto, Intellectual
Property, Technology and any information related to business relationships,
strategies, surveys, forecasts, marketing research, product concepts and
product development processes.
SECTION 1.06 DEC AFFILIATES: "DEC Affiliates" mean DowElanco or DowElanco
B.V., any company which owns, directly or indirectly, an equity interest in
DowElanco (the Indiana Partnership) or DowElanco B.V., and any company which
DowElanco Canada, DowElanco (the Indiana partnership) or DowElanco B.V., now
or hereafter owns, directly or indirectly, at least twenty-five percent (25%)
of the company's outstanding equity. For purposes of this Agreement, Mycogen
and Mycogen Affiliates will not be considered DEC Affiliates.
SECTION 1.07 DEC TRANSGENIC TRAITS: "DEC Transgenic Traits" means any trait
which is derived or produced via molecular methods other than markers.
SECTION 1.08 DEVELOPMENTAL TARGETS: "Developmental Targets" means the
quantitative target for the agronomic, oil and meal traits that are defined
as Product Goal, i.e., one such agronomic trait is yield (see definition of
Product Goals) and the Developmental Target for this trait could be for
example yield more than or at least equal to the variety Quannum.
SECTION 1.09 HIGH OLEIC: "High Oleic" means oleic acid content in seed oil
greater than seventy percent (70%) on a weight percent basis.
SECTION 1.10 INTELLECTUAL PROPERTY: "Intellectual Property" means all PVP(s),
and Patent(s) and patent know-how owned or controlled by Mycogen, filed or
developed prior to the execution of this Agreement, related to Varieties,
Product Goals and Developmental Targets and any continuation, divisional,
continuation-in-part, reexaminations reissue application(s) thereof, and any
corresponding foreign patent application(s) thereof and any patents derived
from any of the foregoing, and any other U.S. or foreign patent/patent
application(s) owned or licensed by Mycogen to the extent that the PVP(s) and
Patent(s)/patent application(s) claim any of the Varieties, Product Goals or
Developmental Targets.
SECTION 1.11 MANAGEMENT DEVELOPMENT TEAM: "Management Development Team or
MDT" means a team comprising two (2) Mycogen and three (3) DEC and/or DEC
Affiliate employees.
SECTION 1.12 MYCOGEN AFFILIATES: "Mycogen Affiliates" means any company which
Mycogen owns directly or indirectly at least twenty-five percent (25%) of the
company's outstanding equity.
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SECTION 1.13 NET SALES: "Net Sales" means the invoice price of any sale,
lease, transfer or other disposition of Planting Seeds to customers less (i)
value added tax, sales or turnover tax, excise taxes and duties which are
included in the price, (ii) trade, quantity and cash discounts actually
allowed and taken, (iii) allowances for credits given for rejected or
returned Planting Seeds, (iv) rebates, and (v) freight and insurance if
included in the price. If Planting Seeds are transferred among DEC
Affiliates, such transfers shall not be considered to be included in Net
Sales and subject to a royalty under this Agreement, unless the transferee
uses the Planting Seeds without transferring such Planting Seeds to a non-DEC
Affiliate for consideration. Any subsequent transfer by a DEC Affiliate to a
non-DEC Affiliate shall be included in the Net Sales subject to a royalty
under this Agreement, and the invoice price used in determining Net Sales for
the transfer shall be the invoice price for the transfer by the DEC Affiliate
to the non-DEC Affiliate.
SECTION 1.12 PATENT(S): "Patent(s)" shall mean all patent(s) and patent
application(s) owned or controlled by Mycogen, including any application(s)
and patent(s) which were filed prior to the execution of this Agreement, any
continuation, divisional, continuations-in-part, reexamination, reissue
patent(s) and patent application(s), as well as foreign patent(s) and patent
application(s) claiming Varieties or products produced by Varieties which
meet Product Goals, such as oils having High Oleic content and include, but
not limited to, US Patent Application No. 08/374402 entitled "75% Oleate
Canola Oil with Improved Stability" and any continuation, divisional,
continuations-in-part, reexamination, reissue patent(s) and patent
application(s), as well as foreign patent(s) thereof.
SECTION 1.15 PLANTING SEEDS: "Planting Seeds" means seeds of Varieties which
are sold for commercial production of canola or other BRASSICA species.
SECTION 1.16 PRODUCTS: "Products" means materials developed from processing of
commercial crop grown from Planting Seeds or Program Planting Seeds.
SECTION 1.17 PRODUCT GOALS: "Product Goals" means a) agronomic traits, such
as, but not limited to: yield, maturity, lodging resistance and disease
resistance, such as blackleg; b) oil traits, such as, but not limited to: oil
percentage on a seed weight basis, erocic acid level, oleic acid level and
linolenic acid level; and c) meal traits, such as, but not limited to: fiber
percentage, glucosinolate content, sinapine content, phytic acid content, and
protein content. The Product Goals may be further defined by the Management
Development Team. However, Product Goals will exclude transgenic traits,
including but not limited to Bt Traits and Roundup Ready Traits, except as to
the extent that such traits become available to DEC under the provisions of
this Agreement, or by other written agreement of the parties.
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SECTION 1.18 PROGRAM: "Program" means development via traditional breeding and
mutation techniques of BRASSICA germplasm and cultivars and the production of
Program Varieties to meet Product Goals and Development Targets.
SECTION 1.19 PROGRAM PLANTING SEEDS: "Program Planting Seeds" means seeds of
Program Varieties which are sold for commercial production of canola or other
BRASSICA species.
SECTION 1.20 PROGRAM PVP(s): "Program PVP(s)" means Plant Variety Protection
applications(s) and certificate(s) claiming Porgram Varieties.
SECTION 1.21 PROGRAM REPORTS: "Programs Reports" means written reports
containing information on progress of research and development, field data,
along with the costs and expenditures of the Program. The costs and expenditures
shall be reported in sufficient detail such that a third party audit could be
completed if necessary. Research and development information shall include but
shall not be limited to information about results from laboratory analysis of
oil and meal traits identified as Developmental Targets and Product Goals. Field
data shall include all results from nurseries and yield trials for agronomic
traits identified as Product Goals and Developmental Targets.
SECTION 1.22 PROGRAM VARIETIES: "Program Varieties" means varieties developed
under the Program using Mycogen germplasm, licensed germplasm and germplasm in
the public domain.
SECTION 1.23 PVP(S): "PVP(S)" means Plant Variety Protection applications(s) and
certificate(s) owned or controlled by Mycogen covering Varieties.
SECTION 1.24 ROUND-UP READY VARIETIES: "Round-up Ready Varieties" means
Varieties, Program Varieties, Bt Varieties, Bt Program Varieties that contain
the Round-up Ready gene.
SECTION 1.25 SEEDS: "Seeds" shall mean an organ of the plant which is harvested
and sown in a successive growing season to produce the next generation of
plants, where such Seeds are not Planting Seeds or Program Planting Seeds.
SECTION 1.26 TECHNOLOGY: "Technology" means Varieties, and Intellectual
Property, breeding techniques and any know-how that is related to the Program,
but was developed prior to the effective date of this agreement, but only to the
extent that such technology is used in the program.
SECTION 1.27 THIRD PARTY VARIETIES: "Third Party Varieties" means Varieties
developed solely from third-party germplasm outside the Program.
SECTION 1.28 VARIETIES: "Varieties" means oilseed BRASSICA germplasm and
cultivars developed by Mycogen prior to the Program as listed in Appendix A.
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ARTICLE 2 - OILSEED BRASSICA VARIETY AND BREEDING LINES DEVELOPMENT PROGRAM
SECTION 2.01 BRASSICA VARIETY DEVELOPMENT SCHEDULE: BRASSICA Variety Development
Schedule is defined in Appendix B and is incorporated in full by reference. The
MDT, as defined in the Section below, will agree upon Product Goals and
Developmental Targets for the Program. Thereafter on a yearly basis, the MDT
shall establish and modify the benchmarks and monitor the progress of the
Program. Modifications to the Developmental Targets and Program Goals shall be
made yearly on or by February 15th by the MDT. Mycogen will use reasonably
diligent efforts to develop by March 15th of year four (4) at least twenty (20)
Program Varieties containing Developmental Targets for DEC evaluation. The
objective of the Program is to commercialize at least one (1) Program Variety in
year seven (7) of the Program.
SECTION 2.02 BRASSICA VARIETY MANAGEMENT DEVELOPMENT TEAM: A Management
Development Team (MDT) will meet within thirty (30) days of receipt of Program
Reports. The location of the meetings shall be determined by the MDT. The MDT
shall annually up date Appendix C, listing the Varieties that are developed
under the Program. The MDT shall be comprised of two (2) Mycogen and three (3)
DEC employees, and ad hoc a DEC and a Mycogen attorney. The MDT shall review the
Program Reports and make recommendations regarding modification of the Program
so that the Program meets its Product Goals and Developmental Targets.
SECTION 2.03 BRASSICA VARIETY DEVELOPMENT PROGRAM:
A) DEVELOPMENTAL TARGETS: Mycogen shall incorporate Developmental Targets into
germplasm according to the BRASSICA Variety Development Schedule in Section 1
above.
SECTION 2.04 PROGRAM REPORTS: Mycogen shall provide Program Reports on a
quarterly basis according to a schedule established by the MDT, which schedule
may be changed from time to time.
SECTION 2.05 MAINTENANCE OF ADVANCED SEED: Mycogen shall be responsible for
maintaining at least five (5) pounds of pre-breeder seed of all advanced
relevant Varieties and Program Varieties as determined by the MDT. At the
request of DEC a breeder seed increase will be performed by Mycogen.
SECTION 2.06 DEC FIELD TESTING: At DEC's discretion, DEC may conduct
testing/field testing of Varieties or Program Varieties. DEC shall share data
from such testing/field testing with Mycogen.
SECTION 2.07 MYCOGEN FIELD TESTING: Mycogen shall obtain data which supports
advancement of Varieties or Program Varieties according to the BRASSICA Variety
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Development Schedule-attached hereto as Appendix B. This data shall be included
in Program Reports.
SECTION 2.08 FUNDING AND PAYMENTS: DEC shall pay only the actual costs of the
Program, which in any event, at least U.S. $750,000 per year. Costs and
expenditures of the Program shall be included in Program Reports. DEC shall pay
Mycogen for the cost of Program within thirty (30) days of receipt of Program
Report. Payments for the Program shall be made to the following address:
Mycogen Corporation
5501 Berlin Drive
San Diego, California 92121
SECTION 2.09 INVENTIONS: Subject to Articles 3 and 4, DEC shall own all Program
Varieties. The Parties shall be responsible for filing and/or maintaining
Patent(s) as specified in Section 2.10.
SECTION 2.10 FILING AND MAINTAINING PATENT(S) AND PVP(S): Mycogen warrants that
it will use its best efforts to prosecute and maintain any Patent(s) or PVP(s)
which exist at the execution of this agreement. Mycogen warrants that it shall
pay any taxes and maintenance fees to keep Patent(s) or PVP(s) in full force and
effect during the term of this Agreement. However, if Mycogen decides not to
make such payments or abandon prosecution of Patent(s) or PVP(s), Mycogen shall
give DEC at least sixty (60) days notice so that DEC may talk over the
prosecution of Patent(s) or PVP(s) or make such payments to keep Patent(s) or
PVP(s) in force. DE shall be solely reponsible for filing, prosecuting and
maintaining patent(s) or PVPs which are filed after the execution of this
Agreement and which are developed under the Program. If DEC decides no to file
patent(s) or PVP(s) claiming Program Varieties, Mycogen may file such patent(s)
or PVP(s). If DEC decides to abandon or fails to pay maintenance fees or taxes,
Mycogen may take over payment of fees or taxes for patent(s) or PVP(s). However,
even if Mycogen takes over the filing or maintenance of patent(s) or PVP(s), DEC
shall have a license as described in Sections 3.01 and 4.01 hereunder.
ARTICLE 3 - RIGHTS AND GRANTS
SECTION 3.01 MYCOGEN GRANTS REGARDING VARIETIES: Mycogen grants DEC a sole,
irrevocable, exclusive right to develop, make, have made, use, sublicense sell
and have sold the Planting Seeds and Program Planting Seeds and products
therefrom. No right is granted under this Agreement to sublicense the use of
Varieties or Program Varieties for breeding or the development of new planting
materials.
SECTION 3.02 DEC OPTION REGARDING Bt PATENT(S) AND ACCESS TO ROUND-UP READY
TRAITS: If Mycogen grants a Bt license in BRASSICA to a third party, the DEC may
license Bt's from Mycogen to produce Planting Seed of Bt Varieties or Program
Planting Seed of Bt
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Program Varieties under terms and conditions no less favorable than other
licensees of Bt in BRASSICA. If Mycogen obtains access to Round-up Ready traits
for BRASSICA and can sublicense such rights, DEC shall have an option to license
the traits for producing Planting Seed of Round-up Ready Varieties or Program
Planting Seed of Round-up Ready Program Varieties. The terms and conditions of
the license shall be no less favorable than the terms and conditions of other
Mycogen Round-up Ready licenses.
SECTION 3.03 MYCOGEN OPTION REGARDING PLANTING SEED AND PROGRAM PLANTING SEED OF
VARIETIES AND PROGRAM VARIETIES: If DEC licenses Planting Seed or Program
Planting Seed of Varieties or Program Varieties to third parties, then Mycogen
will have the right to obtain a license from DEC to make, have made, use and
sell such Planting Seeds and Program Planting Seeds of such Varieties or Program
Varieties from DEC under terms and conditions no less favorable than those
granted by DEC to such third Parties.
SECTION 3.04 DEC OPTION REGARDING FUTURE TRAITS: If Mycogen grants a license to
a third party for future traits or technology related to BRASSICA, then DEC may
license such traits or technology under terms and conditions no less favorable
than other licensees; however, if Mycogen obtains a license to Rutgers
University low saturation technology for use in oilseed BRASSICA, Mycogen will
license the technology to DEC for use in BRASSICA. DEC and Mycogen shall agree
to negotiate licensing terms and conditions for the Rutgers University low
saturation technology in good faith.
SECTION 3.05 MYCOGEN OPTION TO PRODUCE SEED: Mycogen and Mycogen Affiliates will
have the first option to produce Planting Seeds for DEC and DEC Affiliates,
provided that Mycogen or a Mycogen Affiliate is able to offer such production on
a competitive basis in terms of quality, quantity and price.
ARTICLE 4 - ROYALTIES
SECTION 4.01 ROYALTIES PAID BY DEC FOR VARIETIES: DEC shall pay Mycogen a five
percent (5%) royalty in U.S. dollars based on Net Sales of Planting Seed of
Varieties and Program Planting Seed of Program Varieties. If Varieties or
Program Varieties are High Oleic, then DEC shall pay Mycogen an additional
royalty of twenty percent (20%) of any premium that is earned when compared to
canola oil which is not High Oleic. The price for canola oil shall be determined
by the closing price of canola on the Canadian Commodities Exchange based on the
volume sold and the date of sale. Royalties will not be paid to Mycogen for
the commercialization of Third Party Varieties. Royalties will not be paid on
value-added to Planting Seeds or Program Planting Seeds by the incorporation of
DEC Transgenic Traits. No royalties will be due under this provision on any Net
Sales of Planting Seed of Varieties or Program Planting of Program Varieties by
Mycogen or Mycogen Affiliates.
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SECTION 4.02 TERM OF ROYALTIES PAID: DEC shall pay the five percent (5%)
royalties, as described in Sections 4.01, for the commercial lifetime of the
Varieties or Program Varieties.
ARTICLE 5 - REGISTRATION
SECTION 5.01 CANADIAN REGISTRATION FOR VARIETIES, PROGRAM VARIETIES, BT PROGRAM
VARIETIES AND BT VARIETIES: DEC shall develop registration data packages for
obtaining Canadian regulatory approval for the sale of any Bt Traits in Bt
Varieties or Bt Program Varieties and for the registration of Varieties or
Program Varieties. DEC shall have access and be able to use any Mycogen
regulatory data and information without additional compensation to Mycogen. At
the request of DEC, Mycogen shall use reasonable efforts to provide data needed
for registration, including but not limited to data related to Product Goals,
morphological traits and the like.
ARTICLE 6 - RECORDS AND TAXES
SECTION 6.01 RECORDS: The parties agree to maintain complete and accurate
books and records in accordance with normal accounting practice in respect to
all Varieties and Program Varieties sold under this Agreement.
SECTION 6.02 TAXES: In the event that withholding taxes are due on any royalties
payable under this Agreement, the party paying the royalty shall withhold the
withholding taxes required and promptly remit such taxes to the appropriate tax
authority. DEC shall be entitled to deduct such withheld taxes from the
royalties otherwise payable to the other party hereunder. The party paying the
taxes shall promptly provide the other party with documentation evidencing the
payment of such taxes.
SECTION 6.03 ADDRESS OF ROYALTIES PAYMENTS:
Mycogen, to: Mycogen Seeds
1340 Corporate Ctr Curve
St. Paul, MN 55121
Attention: Finance Department
DEC, to: DowElanco
9330 Zionsville Road
Indianapolis, Indiana
Attention:
or to such other address provided in writing.
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ARTICLE 7 - WARRANTIES, INFRINGEMENT & PRODUCT LIABILITY
SECTION 7.01 WARRANTIES OF OWNERSHIP AND MERCHANTABILITY:
A. Mycogen warrants that it has the right to license Varieties and has the
right to enter into this Agreement. If, after the execution of this
Agreement, any licenses are obtained by either party from third parties to
varieties, both Mycogen and DEC warrant they will use their best efforts to
obtain terms of the license which permits utilization of such license within
the scope of this license. However, nothing in this Agreement shall be
construed as:
(i) a warranty as to the validity or scope of any Patent(s) or PVP(s);
(ii) a warranty or representation that anything made, used, sold or otherwise
disposed of under the licenses granted in this Agreement will or will not
infringe patents or plant variety protection certificates of third paries; and
(iii) an obligation to bring or prosecute actions or suits against third parties
for infringement of patent(s) or plant variety protection certificate(s), except
as agreed herein under Section 5.02 hereof.
B. MYCOGEN MAKES NO REPRESENTATIONS, EXTENDS NO WARRANTIES OF ANY KIND, EITHER
EXPRESS OR IMPLIED, INCLUDING WARRANTIES FOR MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE, AND ASSUMES NO RESPONSIBILITIES WHATSOEVER WITH RESPECT TO
ANY MATERIALS PROVIDED TO DEC RELATING TO THE TECHNOLOGY OR TO THE USE, SALE, OR
OTHER DISPOSITION BY DEC OR ITS VENDEES OR OTHER TRANSFEREES OF PLANTING SEEDS
OR PROGRAM PLANTING SEEDS INCORPORATING OF MADE BY USE OF INTELLECTUAL PROPERTY
LICENSED UNDER THIS AGREEMENT.
SECTION 7.02 INFRINGEMENT OF PATENT(S):
A. DEC may pursue actions to abate infringement of the Patent(s) or PVP(s) and
DEC shall incur all costs associated with abatement of the infringing activity.
Mycogen shall reasonably assist DEC in such litigation, provided DEC reasonably
compensates Mycogen for such assistance. If there is a commercially significant
third party infringement of any claim(s) in any Patent(s) or PVP(s) and DEC does
not wish to bring an infringement action, then DEC shall execute whatever
documents are necessary to enable Mycogen to pursue such infringement action in
their name if so desired. DEC shall provide reasonable assistance to Mycogen;
however, Mycogen shall reimburse DEC for reasonable expenses associated with
such assistance. If a party declines to participate in the litigation, other
than reasonable assistance, then the party filing the litigation shall have the
right to control such litigation. If the interested party prevails, any damages
and/or costs awarded shall belong to the interested party provided that during
such litigation, the interested party acted in good faith to preserve the right,
title and interest in
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and to the Patent(s) or PVP(s). If DEC files actions to abate infringement of
patent(s) or PVP(s) developed under the Program and filed after the execution of
this Agreement, Mycogen shall provide reasonable assistance to DEC. DEC shall
reimburse Mycogen for reasonable expenses associated with such assistance.
B. In the event that DEC or its sublicensees are sued by a third party for
infringement of a third party's patent with respect to activities performed in
accordance with the licenses granted to DEC under this Agreement, DEC may
request from Mycogen reasonable assistance in defending such infringement
allegations. DEC shall reimburse Mycogen for any out-of-pocket expenses incurred
by Mycogen with respect to such assistance, provided that such suit is not due
to a breach of the Warranties provided in Section 5.01 hereof, or is due to
gross negligence by Mycogen or its representatives. If DEC or its sublicensees
negotiate a license from the third party to practice under the third party's
patent(s) or plant variety protection certificate(s), Mycogen shall in good
faith renegotiated the royalty rates set forth in Section 4.01 and 4.02 hereof,
to reflect the additional expenditures required by DEC to practice the licenses
granted herein.
C. The A and B provisions above will not apply to intellectual property rights
relating to any Mycogen transgenic traits, including but not limited to Bt
Traits, Round-up Ready Traits and transgenic disease resistance traits. The
enforcement and defense of these rights will be controlled by Mycogen, except to
the extent otherwise agreed by the parties.
SECTION 7.03 PRODUCT LIABILITY: DEC shall indemnify Mycogen for any liabilities
related to claims and expenses, including legal expenses and reasonable
attorney's 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
Planting Seeds or Program Planting Seeds, except where negligent conduct on the
part of Mycogen is the sole cause of the claim.
ARTICLE 8 - CONFIDENTIALITY
SECTION 8.01 CONFIDENTIAL INFORMATION: The parties shall hold all Confidential
Information in confidence and shall use their best efforts to protect the
confidentiality of the information. The parties shall not publish, disclose, or
allow a third party access to, nor use for any purpose the other party's
Confidential Information. The parties may disclose confidential Information to
consultants and third parties provided: a) a secrecy agreement is obtained that
is at least as restrictive as the confidentiality provisions in this Agreement,
and b) each party notifies the other party of such disclosure and provides a
copy of the executed secrecy agreement with the consultant or third party:
however under no circumstances shall Mycogen disclose information to Pioneer
International Hi-bred without the written consent of DEC. The term for
confidentiality between the parties hereto shall continue until five (5) years
after the termination of this Agreement.
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SECTION 8.02 EXCEPTIONS: The obligations of confidentiality of Section 8.01
hereof shall not apply to Confidential Information that the receiving party can
show;
A) by written records was in its possession prior to disclosure under this
Agreement and which has not been previously acquired from the disclosing party:
B) is or becomes part of the public domain through no fault of the
receiving party;
C) is lawfully received without an obligation of confidence from a third
party legally entitled to disclose the information.
D) is required by law to be disclosed but only to the extent it is so
required; or
E) is required to be disclosed to a governmental agency to obtain the
necessary approvals for the sale of Planting Seeds and Program Planting Seeds
and such information cannot be claimed as "business confidential".
ARTICLE 9 - RECORD KEEPING
SECTION 9.01 BOOKS AND RECORDS: The parties shall keep books and records
sufficient to verify the accuracy and completeness of payments under Article 4
hereof. Such books and records shall be preserved for a period not less than
three (3) years after they are created during and after the term of this
Agreement.
SECTION 9.02 AUDIT: On thirty (30) days notice, during regular business hours
and at a single location, a party shall have the right to have an independent
auditor examine the other party's sales records and books of accounts to verify
the accuracy of royalty payments. The costs for any audit shall be paid by the
party requesting the audit.
ARTICLE 10 - TERM & TERMINATION
SECTION 10.01 EXPIRATION OF LICENSE: The term of this License Agreement shall
begin on May 15, 1996 and continue until the last commercial sale of Varieties.
SECTION 10.02 PROGRAM TERM: The term of the Program is retroactive and begins
five (5) years from May 15, 1996. The Program may be extended in writing upon
mutual agreement between the parties.
SECTION 10.03 TERMINATION: If the parties are unable to agree on the initial
Product Goals and Development Targets by April 30th of year one (1), DEC may
terminate this Agreement within thirty (30) days written notice of April 30th.
Thereafter, DEC may terminate the Program at any time for any reason by giving
at least six(6) months
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unambiguous, written notice of such termination to Mycogen. Termination of
the PRogram shall not effect the licenses gratned herein.
SECTION 10.04 DEFAULT: If either party at any time defaults in the timely
payment of any moneys due to the other party, or if Mycogen fails to actively
pursue the Program, or if either party fails to remedy any such breach or
default within ninety (90) days after written notice thereof by the other
party, the non-breaching party may, at its option, terminate this Agreement by
giving notice of termination to the breaching party. However, if there is any
disagreement as to the sufficiency of the brreaching party's remedy, the
praties agree to settle the controversy through a mutually agreed upon third-
party mediator no later than sexty (60) days after the aforementioned ninety
(90) day period has ended.
SECTION 10.05 ACCOUNTING UPON TERMINATIOIN OR EXPIRATION: On the termination
or expiration of this License Agreement, the parties shall remain obligated
to provide an accounting for and to pay royalties earned up to the date of the
termination or expiration.
ARTICLE 11 - MISCELLANEOUS
SECTION 11.01 PUBLIC ANNOUNCEMENTS: No public announcement or press release
concerning this Agreement or the transactions contemplated herein shall be
made by either of the parties hereto without the prior consent and approval
of the other party (which consent shall not be unreasonably withheld or
delayed), except to the extent required by law.
SECTION 11.02 ASSIGNMENT AND TRANSFERABILTIY OF THE AGREEMENT: This
Agreement may be assigned to DEC Affiliates, or to a purchaser of
substantially all of the business interests of DEC. Mycogen may not assign
this Agreement under any circumstances without the written consent of DEC.
Section 11.03 ENTIRE AGREEMENT: This Agreement constitutes the entire
agreement between the parties hereto with respect to the subject matter
hereof and cancels and supersedes any prior understandings and agreements
between the parties hereto with respect to the subject matter of this
Agreement. There are no rerepresentations, warranties, terms, conditions,
undertakintgs or collateral agreements, express, implied or statutory, between
the parties other than as expressly set forth in this Agreement.
Section 11.04 AMENDMENTS AND WAIVER: No modification of or amendment to this
Agreement shall be valid or binding unless set forth in writing and duly
executed by the parties hereto and no waiver of any breach of any term or
provision of this Agreement shall be effective or binding unless made in
writing and signed by the party purporting to give the same and, unless
otherwise provided, shall be limited to the specific breach waived.
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SECTION 11.05 NOTICES: Any demand, notice or other communication to be given
in connecion with this Agreement shall be given in writing and shall be given
by personal delivery or by electronic means addressed to the recipeient as
follow:
To Mycogen: Mycogen Seeds
1340 Corporate Ctr Curve
St. Paul, MN 55121
Attention: Larry Sernyk
with written copy to Mycogen Seeds
5501 Oberlin Drive
San Diego, CA 92121
Attention: Legal Department
To DEC: General Patent Counsel
Patent Department
DowElanco
9330 Zionsville Road
Indianapolis, Indiana 46265-1054
or to such other address, individual or electronic communication number as
may be desgnated by notice given by either pary to the other. Any demand,
notice or other communication given by personal delivery shall be
conclusively deemed to have been given on the day of actual delivery thereof
and, if given by electronic communication. On the day of transmittal thereof
if given during the normal business hours next occur if not given during such
hours on any day. IF the pary giving any demand, notice or other
communication knows or ought reasonable to know of any difficulties with the
postal system which might affect the delivery of mail, any such demand,
notice or other communication shall not be mailed but shall be given by
personal delivery or by electronic communication.
SECTION 11.06 GOVERNING LAW: This Agreement shall be governed by and
construed in accordance with the laws of the State of California, USA.
SECTION 11.07 HEADINGS: The Headings of Articles and SEctions used in this
Agreement are for reference purpose only and will not be considered as padrt
of this Agreement for purposes of interpretation.
SECTION 11.08 PROVISIONS OF THE AGREEMENT: If any one or more of the
provisions of tlhis Agreement should for any reason be held by a Court of
competent jurisdiction to be invalid, illegal or unenfoceable , the remainder
of this Agreement will nevertheless remain in full force and efect unless
such provision(s) go to the essence and substance of this Agreement.
13
SECTION 11.09 SCHEDULES: Mycogen shall provide Schedules A,B, and C within
thirty (30) days of the last signature hereto. The schedules shall not
affect the effective date of this Agreement.
IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement on
the dates indicated below.
MYCOGEN CORPORATION
By: /s/ Carl Eibl
--------------------------------
Name: Carl Eibl
Title: President
Date: 11/3/97
------------------------------
DOWELANCO CANADA, INC.
By: /s/ John L. Hagaman
--------------------------------
Name: John L. Hagaman
Title: President and CEO
Date: October 30, 1997
------------------------------
14
Appendix A
- -----------
Brassica germplasm
(Schedule to be provided by Mycogen within thiry (30) days of signing)
15
SCHEDULE A
MYCOGEN SEEDS BRASSICA AND RELATED SPECIES GERMPLASM
BRASSICA NAPUS L. ADVANCED STRAINS
- --------------------------------------------------------------------------------
Variety/Strain Description
- --------------------------------------------------------------------------------
AG019 HOLLY Canole-!st HOLLY Canola developed by Agrigenetics
and basis for HOLLY oil patent applications
- --------------------------------------------------------------------------------
EXP94-03 HOLLY Canola
- --------------------------------------------------------------------------------
EXP94-06 HOLLY Canola-registered in 1997 for contract production
in Canada uner the designation DMS100
- --------------------------------------------------------------------------------
SVO95-08 HOLLY Canola
- --------------------------------------------------------------------------------
SVO95-13 HOLLY Canola with very low C18;3
- --------------------------------------------------------------------------------
EXP95-06 High oleic Canola
- --------------------------------------------------------------------------------
EXP95-09 High oleic Canola
- --------------------------------------------------------------------------------
EXP95-10 High oleic Canola
- --------------------------------------------------------------------------------
MPS96-01 High erucic/low glucosinolates with high oil content
- --------------------------------------------------------------------------------
MPS96-02 High erucic/low glucosinolates with high oil content
- --------------------------------------------------------------------------------
MPS96-03 High erucic/low glucosinolates with high oil content
- --------------------------------------------------------------------------------
MPS96-04 High erucic/low glucosinolates with high oil content
- --------------------------------------------------------------------------------
MPS96-05 High erucic/low glucosinolates with high oil content
- --------------------------------------------------------------------------------
MPS96-06 High palmitic/high erucic/low glucosinolates
- --------------------------------------------------------------------------------
MPS96-07 High palmitic/high erucic/low glucosinolates
- --------------------------------------------------------------------------------
BRASSICA NAPUS L. BREEDING POPULATIONS
As described in the Mycogen/Agrigentics laboratory notebooks listed below:
- ----------------------------------------------------------------------
Volume Notebook Number Issued To
- ----------------------------------------------------------------------
Rapeseed V! 2007 Larry Sernyk
Rapeseed V2 2155 Larry Sernyk
Rapeseed V3 2293 Larry Sernyk
Rapeseed V4 2343 Jay Laing
- ----------------------------------------------------------------------
Appendix B
- ----------
Variety Development Schedule
Appendix C
Program Varieties
VARIETY DEVELOPMENT FLOWCHART - RAPESEED
CONTRACT REGISTRATION
Mycogen Seeds
YEAR 1 2 3 4
STAGE Oa ob 1 2
Produce Othaplod
Crosses Production Nursery Prelim
(1 year) (1 year) (1 year) (1 year)
------------------------------------------------------------------------------------------------------
STAGE Plan and make Produce dihaploids Nursery screening of Replicated trials at 4
DESCRIPTION crosses according to using microscope dihaploids at 2 location (3 replicates)
product goals culture locations of best dilhaploids from
nursery screen
------------------------------------------------------------------------------------------------------
NUMBER OF STRAINS 2000 250 25
AT END OF STAGE 12.5% 10.0%
RESPONSIBILITIIES
------------------------------------------------------------------------------------------------------
RESEARCH
(MYCOGEN) 1. Plan F1 crosses 1. Produce dihaploids 1. Conduct dihaploids 1. Conduct replicated trials
According to strains nurseries (In house and contract)
product goals
2. Make F1 crosses 2. Analytical screen 2. Analyze results 2. Analyize results and
for product goal and make selections make selection for
for advancement advancement
3. probreeder seed
production (winter
greenhouse)
--------------------------------------------------------------------------------------------------------
PRODUCT CHARACTERIZATION
LEADER (PCL)
(DOWELANCO CANADA)
1. Monitor strain 1. Monitor strain
advancement advancement process
process
--------------------------------------------------------------------------------------------------------
PRODUCT SUCESS LEADER
(PSL)
(DOWELANCO CANADA)
1. Delias product 1. Review strain performance
goals
2. Communicate product lineup
needs with research
DowElenco
YEAR 5 6 7 8
STAGE 3a 3b 4 5
Contract Contract
Registration 1 Registration 2 Pre-Launch Launch
(1 year) (1 year)
--------------------------------------------------------------------------------------------------------
STAGE First year contract Second year contract Validale varieial One variety every two years
DESCRIPTION registration trials registration trials characteristics with in each of mid season and
at 6-E locations of at 6-E location of growers and end long season maturity
best dilhaploids dilhaploids from users groups
from prelim first year contract
trials registration trials
--------------------------------------------------------------------------------------------------------
NUMBER OF STRAINS 4 1 1
AT END OF STAGE 18.0% 25.0% 100.0%
RESPONSIBILITIIES
--------------------------------------------------------------------------------------------------------
RESEARCH
(MYCOGEN) 1. Greeder seed 1. Collect 1. Provid's support to 1. Provide support to PCL and
production (year Information in PCL and PSL as PSL as required
in 4-5 winter) contract required
regulation for and
file PVP
2. Collect
information in
contract
registration trials
for PVP
--------------------------------------------------------------------------------------------------------
PRODUCT CHARACTERIZATION 1. Conduct contract 1. Conduct contract 1. Provide support to 1. Provide support to PSL as
LEADER (PCL) registration registration PSL as required required
(DOWELANCO CANADA) trials (In house trials (In house
and contract) contract
2. Analze results 2. Analyze results and 2. Organize agronomic
and make prepare submission and quality
selections for for variety validation trials
advancement registration thoughout target
area
3. Foundation seed
production
--------------------------------------------------------------------------------------------------------
PRODUCT SUCESS LEADER 1. Review strain 1. Review strain 1. Certified seed 1. Lauch variety
(PSL) performance performance production
(DOWELANCO CANADA) 2. Participate in 2. Participate in 2. Commercial
strain strain production
advancement advancement
discussions discussions
3. Project seed 3. Develop commercial
requirement for strategy for
launch strains
--------------------------------------------------------------------------------------------------------