Master Collaboration Agreement - Diversa Corp. and Dow Chemical Co.
MASTER COLLABORATION AGREEMENT
BETWEEN
DIVERSA CORPORATION
AND
THE DOW CHEMICAL COMPANY
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TABLE OF CONTENTS
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Article Title Page
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<S> <C> <C>
1 Definitions 1
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2 Grants 6
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3 Project Agreements 8
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4 Royalties, Reports and Payments 10
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5 Confidentiality 12
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6 Publication 13
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7 Intellectual Property 14
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8 Option to [***] 18
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9 Term and Disengagement 18
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10 Product Liability and 19
Indemnification
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11 Export and Compliance with Laws 20
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12 Dispute Resolution 20
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13 Representations and Warranties 21
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14 Bankruptcy 22
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15 Force Majeure 23
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16 Assignment and Successors 23
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17 Notice 23
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18 Miscellaneous 24
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<TABLE>
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Exhibits Title
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<C> <S>
1 Confidential Disclosure Agreement
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2 [***]
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</TABLE>
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* CONFIDENTIAL TREATMENT REQUESTED
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Project Agreements*
<TABLE>
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Appendix Title
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<S> <C>
A-1 Schedule of DIVERSA Patent Rights under the Project
Agreement
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A-2 Schedule of DIVERSA Patent Rights predate this MCA
and Project Agreement but needed for Licensed
Products
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B-1 Schedule of TDCC Patent Rights under the Project
Agreements
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B-2 Schedule of TDCC Patent Rights that predate this
MCA and Project Agreement, but needed for Licensed
Product
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C List of Licensed Enzyme and Project Field
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D-1 MTA for an Institute
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D-2 MTA for a Toll Manufacturer
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D-3 MTA for a Customer
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E [***]
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F Schedule of Licensed Patents from DIVERSA Patent
Rights for a Licensed Product (subset or all of
Appendix A-1)
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</TABLE>
* Will be provided as each Project Agreement is signed
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* CONFIDENTIAL TREATMENT REQUESTED
2
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MASTER COLLABORATION AGREEMENT
This Agreement ("MCA") is made by and between Diversa Corporation, a corporation
duly formed and existing under the laws of the State of Delaware, having a place
of business at 10665 Sorrento Valley Road, San Diego, CA 92121 (hereinafter
"DIVERSA" or "Party"), and The Dow Chemical Company, a corporation duly formed
and existing under the laws of the State of Delaware, having a place of business
at 2030 Dow Center, Midland, MI 48674 (hereinafter "DOW" or a "Party").
R E C I T A L S
A. DIVERSA has discovered and developed enzymes and has expertise in the
rearrangement of DNA to produce and discover genes utilizing proprietary
technologies for the rapid discovery, development and optimization of
enzymes.
B. TDCC has a contract manufacturing business for preparing pharmaceutical
products for the pharmaceutical industry.
C. TDCC and DIVERSA desire to work together to discover, manufacture, market
and sell biological enzyme-based chiral products and services for
pharmaceutical applications.
D. TDCC and DIVERSA are concurrently with this MCA entering into separate
Project Agreements in order to perform research together to have DIVERSA
discover and optimize the function of new genes, and to have TDCC develop
and maximize processes and products for making chiral products resulting
therefrom for use in the pharmaceutical marketplace.
E. DIVERSA represents that it has Patent Rights and Know-How that pertain to
this MCA.
F. TDCC is desirous of obtaining, and DIVERSA wishes to grant, a worldwide
license to sell enzymes discovered or developed by DIVERSA for making
chiral compounds for the pharmaceutical marketplace.
NOW, THEREFORE, in consideration of the mutual covenants contained herein, and
for other good and valuable consideration, the receipt and sufficiency of which
the Parties hereby acknowledge, the Parties hereby agree as follows:
Article 1. DEFINITIONS
When used in this MCA, the following terms shall have the meanings set out
below, unless the context requires otherwise. The singular shall be interpreted
as including the plural and vice versa, unless the context clearly indicates
otherwise.
1.1 "Affiliate" means any corporation, firm, limited liability company,
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partnership or other entity that is directly or indirectly controlled by a
Party. Control for this purpose means ownership, directly or through one or
more affiliated entities, of greater than fifty percent (50%) of the shares
of stock entitled to vote for the election of directors in the case of a
corporation, or more than fifty percent (50%) of the equity interests in
the case of any other type of legal entity, or any other arrangement
whereby a Party controls or has the
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right to control the board of directors or equivalent governing body of a
corporation or other entity.
1.1 "API" means [***].
---
1.2 "CDA" means the Confidentiality Agreement between the Parties, effective
---
February 23, 1999 and its amendment effective May 16, 2000. For ease of
reference a copy thereof is attached hereto as Exhibit 1.
1.3 "Change of Control" means any of the following transactions involving a
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Third Party:
a) a merger or consolidation of either Party which results in the voting
securities of such Party outstanding immediately prior thereto ceasing
to represent more than 50% of the combined voting power of the
surviving entity immediately after such merger or consolidation;
b) the sale of all or substantially all of the assets of either Party;
c) the sale of substantially all the assets relevant to the Field; or
d) any one person (other than the Party, any trustee or other fiduciary
holding securities under an employee benefit plan of the Party or any
corporation owned directly or indirectly by the stockholders of the
Party, in substantially the same proportion as their ownership of
stock of the Party), together with any of such person's "affiliates"
or "associates", as such terms are used in the Securities Exchange Act
of 1934, as amended, becoming beneficial owner of more than 50% of the
combined voting power of the outstanding securities of a Party or by
contract or otherwise having the right to control the board or
directors or equivalent governing body of such Party nor the ability
to cause the direction of management of such Party.
1.4 "Confidential Information" means all information which the disclosing Party
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could reasonably expect to be deemed confidential (e.g., TDCC Know-How,
DIVERSA Know-How, scientific, technical, or non-technical data,
Intermediates, APIs, business plans, identity of a Sublicensee, financial
projections, and marketing and sales information) disclosed by one Party to
the other, whether disclosed or provided in oral, written (including but
not limited to electronic, facsimile, paper or other means), graphic,
photographic or any other form, except to the extent that such information:
a) as of the date of disclosure is known to the receiving Party as shown
by written documentation, other than by virtue of a prior confidential
disclosure from the disclosing Party to the receiving Party;
b) as of the date of disclosure is in, or subsequently enters, the public
domain through no fault or omission of the receiving Party;
c) as of the date of disclosure or thereafter is obtained from a Third
Party free from any obligation of confidentiality; or
d) as of the date of disclosure or thereafter is developed by the
receiving Party independent of the disclosure by the disclosing Party
as evidenced by written documentation.
Any information first submitted to the other Party in a non-written form
must be identified as confidential information at that time, then reduced
to writing within thirty (30) days, marked as confidential and provided to
the receiving Party.
1.5 "Controls" or "Controlled" means, with respect to intellectual property,
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possession (other than by virtue of this MCA) of the ability to grant
licenses or sublicenses to the other Party hereto or to its Sublicensee
without violating the terms of any agreement or other arrangement with any
Third Party and to the knowledge and belief of the granting Party without
violating the rights of a Third Party.
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* CONFIDENTIAL TREATMENT REQUESTED
2
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1.6 "Customers" means any entity that is only sold Licensed Enzyme,
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Intermediates or API for pharmaceutical applications and is not provided
process information and is not a Sublicensee.
1.7 "DIVERSA" means Diversa Corporation, having a place of business at San
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Diego, California.
1.8 "DIVERSA Know-How" means all [***] and any other information of any kind
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(a) which are conceived, discovered or invented during any Project
Agreement under the terms of this MCA or (b) which have been conceived,
discovered or invented by DIVERSA prior to this MCA and Controlled solely
by DIVERSA, which are necessary or appropriate to develop and
commercialize Licensed Products.
1.9 "DIVERSA Intellectual Property" means DIVERSA Patent Rights and DIVERSA
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Know-How.
1.10 "DIVERSA Patent Rights" means (a) all patents and patent applications
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which are conceived of during the term of the Project Agreements, and
which are necessary for [***]. If such patent rights arise they shall be
listed on Appendix A-1, attached to each Project Agreement and made a part
thereof; (b) the patents and patent applications listed on Appendix A-2,
attached thereto and made a part thereof, are patent rights of DIVERSA
that predate this MCA but which patent rights are necessary for [***]; and
(c) any divisions, continuations, continuations-in-part, reissues,
reexaminations, extensions or other governmental actions which extend any
of the subject matter of the patent applications or patents in (a) or (b)
above, and any substitutions, confirmations, patents-of-addition,
registrations or revalidations of any of the foregoing, in each case,
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which are Controlled by DIVERSA during the term of the Project Agreements
and which are necessary for [***]. All patents and patent applications
subject to this definition are listed on Appendix A or will be included on
Appendix A attached to each Project Agreement by the expiration of the
research term of each Project Agreement.
1.11 "Effective Date" means September 1, 2000.
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1.12 "Enzyme" means [***].
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1.13 "Field" means the discovery, development, manufacture, marketing and sale
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of Licensed Products, [***]and services for [***] used in [***].
1.14 "FTE" means the equivalent of one full year of work on a full time basis
---
by a DIVERSA scientist or other professional possessing the skills and
experience necessary to carry out the Work Plans under a Project
Agreement. It is understood that a full year for any given scientist or
professional may not be required so that partial years for any given
person could result. FTE needs shall form a part of the Staffing Level of
each Project Agreement.
1.15 "Intermediate" means [***].
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1.16 "Joint Patent Rights" means Patent Rights that are developed or invented
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by both Parties in the course of the performance of any Project Agreement.
If the item developed or invented results in a patentable invention, such
invention is jointly developed if both Parties' employees or consultants
are considered inventors under 35 U.S.C. et seq. and
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* CONFIDENTIAL TREATMENT REQUESTED
3
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37 C.F.R. et seq., as interpreted by the U. S. Patent and Trademark Office
and the United States Federal Courts.
1.17 "License" means the license agreement(s) attached to each Project
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Agreement as Exhibit 4 thereto.
1.18 "Licensed Enzyme" means any Enzyme, which is commercialized under this
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MCA, for use in a Project Field. The Licensed Enzyme and Project Field
shall be designated on each Project Agreement and listed in Appendix C
attached thereto and made a part thereof.
1.19 "Licensed Product" means (a) [***] or (b) [***].
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1.20 "Licensed Patents" means DIVERSA Patent Rights that are necessary to have
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the freedom to practice Licensed Products and are indicated on Appendix F
attached to each Project Agreement and made a part thereof. It is expected
that such Licensed Patents will be all or a subset of the DIVERSA Patent
Rights listed in Appendix A with each Project Agreement.
1.21 "MTA" means a material transfer agreement for exchange of any Licensed
---
Enzyme (with or without DIVERSA Know-How or TDCC Know-How) to any Third
Party by DIVERSA or TDCC, a copy of which is attached hereto as Appendix D
for transfer between TDCC or DIVERSA and a Third Party. Appendix D-1 for
an Institute; Appendix D-2 for a Toll Manufacturer; and Appendix D-3 for a
Customer. Any MTA shall be used only under the terms of a Project
Agreement. Any transfer of Enzymes or Licensed Enzymes between TDCC and
DIVERSA shall be deemed Confidential Information (provided under the
confidentiality provisions of this MCA) and not require an MTA.
1.22 "Patent Rights" means DIVERSA Patent Rights, TDCC Patent Rights and Joint
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Patent Rights.
1.23 "Project Agreements" means each individually executed agreement detailing
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a specific research objective in the Project Field, budget with FTE
requirements, and Work Plan, that is attached hereto and made a part
hereof and incorporating the terms of this MCA that are referenced
therein. One Project Agreement shall be signed within 60 days of this MCA;
and other Project Agreements may be appended at any time during the Term
of this MCA.
1.24 "Project Field" means a [***].
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1.25 "Purpose" means having the Parties provide an integrated, full service
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offering of [***] to Customers. This service and Licensed Products may be
offered as early as [***]. Specifically excluded from this Purpose is the
identification of [***].
1.26 "Signature Date" means the date of last signature to this MCA.
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1.27 "Staffing Level" shall have the meaning set forth in each Project
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Agreement.
1.28 "Sublicensee" means a Third Party that has a license agreement with TDCC
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in the Project Field for Licensed Products.
1.29 "TDCC" means The Dow Chemical Company, having a place of business at
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Midland, Michigan.
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* CONFIDENTIAL TREATMENT REQUESTED
4
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1.30 "TDCC Intellectual Property" means TDCC Patent Rights and TDCC Know-How.
--------------------------
1.31 "TDCC Know-How" means all TDCC Confidential Information [***] and other
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information of any kind (a) which are conceived, discovered or invented
during any Project Agreement under the terms of this MCA or (b) which have
been conceived, discovered or invented by TDCC prior to this MCA and
Controlled solely by TDCC, which are necessary or appropriate to develop
and commercialize Licensed Products.
1.32 "TDCC Patent Rights" means (a) all patents and patent applications which
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are conceived of during the term of the Project Agreements, and which are
necessary for TDCC to make, have made, use, import, sublicense, export,
sell or have sold the Licensed Products. If such patent rights arise they
shall be listed on Appendix B-1, attached to each Project Agreement and
made a part thereof; (b) the patents and patent applications listed on
Appendix B-2, attached thereto and made a part thereof, are patent rights
of TDCC that predate this MCA but which patent rights are necessary for
TDCC to make, have made, use, sublicense, import, export, sell or have
sold the Licensed Products; and (c) any divisions, continuations,
continuations-in-part, reissues, reexaminations, extensions or other
governmental actions which extend any of the subject matter of the patent
applications or patents in (a) or (b) above, and any substitutions,
confirmations, patents-of-addition, registrations or revalidations of any
of the foregoing, in each case, which are Controlled by TDCC during the
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term of the Project Agreements and which are necessary for TDCC to make,
have made, use, sublicense, import, export, sell or have sold the Licensed
Products. All patents and patent applications subject to this definition
are listed on Appendix B or will be included on Appendix B attached to
each Project Agreement by the expiration of the research term of each
Project Agreement.
1.33 "Term" means the duration of this MCA which is [***] from the Effective
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Date, unless extended by mutual written agreement.
1.34 "Territory" means the world.
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1.35 "Third Party" means any party who is not a Party, or an Affiliate.
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1.36 "Work Plans" mean the written research plans defining the activities to be
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carried out under each Project Agreement, and the budget, for each project
within the Project Field, as more specifically detailed in Appendix E
attached thereto and made a part thereof, which may be modified from time
to time by written amendment.
Article 2: GRANTS
2.1 Exclusive Grants -
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2.1.1 The Parties agree to a [***] exclusive marketing relationship
starting from the Effective Date for Licensed Enzymes and Licensed
Products in the Territory for the Field and in accordance with the
Purpose.
2.1.2 The Licensed Enzyme and Licensed Product for a specific marketplace
need of a Customer or Sublicensee shall be the subject of separate
Project Agreements, that are attached hereto and made a part hereof,
as described in Article 3. The Licensed Enzyme and Licensed Product
under each Project Agreement is exclusive to TDCC and in accord with
the terms of this MCA and the terms of each Project Agreement.
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* CONFIDENTIAL TREATMENT REQUESTED
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2.2 Reservations -
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2.2.1 [***] - To achieve the Purpose of this MCA, the Parties agree [***]:
(a) [***]
(b) [***]
(c) [***].
2.2.2 Exercise of [***]- The Party presented with [***].
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2.2.3 Interactions with Third Parties - Both Parties may individually or
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with a Third Party pursue any project opportunity outside the Field.
These project opportunities shall not be subject to [***]. Within
the Field, each Party may interact with any Third Party in accord
with Sections 2.1 and 2.2.
2.3 Nonexclusive Grants - Unless a Project Agreement has been signed (with
-------------------
payment made or work begun, including Work Plans), either Party shall be
free to develop and market its services in the Field to Customers and Third
Parties during the term of this MCA. However, [***].
2.4 Roles and Responsibilities -
--------------------------
2.4.1 DIVERSA - DIVERSA shall be responsible for [***].
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2.4.2 TDCC - TDCC shall [***].
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2.4.3 Licensed Enzyme Manufacture - Where, prior to the signature date of
---------------------------
a Project Agreement, DIVERSA has [***] then [***].
2.4.4 When either Party interacts with a Third Party with respect to
opportunities within the Field, that interacting Party shall use its
commercially reasonable efforts to negotiate confidentiality terms
that permit the other Party to be included in the discussions and/or
to provide the Confidential Information of the other Party. The
other Party shall be notified as promptly as possible of these
discussions, including the identity of the Third Party, the specific
Project Field, and the Confidential Information disclosed, in each
case if such information is capable of being disclosed without
breaching any confidentiality agreement. If samples of Licensed
Enzymes are concerned then an MTA shall be required.
2.5 Litigation - Each Party shall be responsible for defending its own Patent
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Rights. Joint Patent Rights defense shall be discussed as to the
respective interests involved.
2.6 Product Liability - The Customer or Sublicensee shall be responsible for
-----------------
all liability of the final drug product or its use of the Intermediate, API
or Licensed Enzyme.
Article 3. PROJECT AGREEMENTS
3.1 [***] Obligation for Project Agreements - Before any project by either
----------------------------------
Party for the Purpose in the Field can be undertaken [***], the other Party
must [***]. This [***] shall be in accordance with Section 2.2. If that
Party does desire to participate, then, a Project Agreement shall be
negotiated, using each Party's good faith efforts.
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* CONFIDENTIAL TREATMENT REQUESTED
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3.2 Terms Required for Each Project Agreement - Each Project Agreement,
-----------------------------------------
independently, shall contain its own budget (including FTEs funded [***]),
Patent Rights appendices from each Party, Work Plans, terms regarding
TDCC's diligence obligation to pursue commercialization, and reference to
this MCA for terms to be maintained. Any royalties or other payments due
shall be negotiated separately for each Project Agreement.
3.3 Improvements during a Project Agreement - Any Licensed Enzyme improvements
---------------------------------------
made by DIVERSA in the Project Field for the Project Agreement during the
term of either this MCA or the Project Agreement shall [***].
3.4 MCA Terms Carried to each Project Agreement - The Parties agree to be bound
-------------------------------------------
by and incorporate into each Project Agreement the terms of this MCA.
3.5 Exclusive Grant Provided Under Each Project Agreement - For each Project
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Agreement, the Licensed Product shall be granted exclusively to TDCC for
the Project Field subject to the terms and conditions of the Project
Agreement and this MCA. DIVERSA's Intellectual Property shall form a
schedule(s) for this exclusive grant. Notwithstanding anything to the
contrary contained herein, DIVERSA shall not be required to license, or
hold harmless TDCC against infringements of, DIVERSA Intellectual Property
that is not legally required for TDCC to carry out its roles and
responsibilities hereunder (as set forth in Section 2.4.2) without
infringing DIVERSA Intellectual Property (e.g., [***], TDCC will be
required to negotiate with DIVERSA for an appropriate license or hold
harmless as part of the applicable Project Agreement). Specific grants for
each Project Agreement will be included in that document, which grants
shall control over this MCA for that Project Field.
3.6 Term of Each Project Agreement - The term of each grant of the exclusive
------------------------------
license to TDCC in accord with Section 3.5 for any Licensed Product shall
be the last to expire of the Patent Rights, including any extensions,
unless terminated earlier by TDCC or its Sublicensee.
3.7 Indemnity by DIVERSA - DIVERSA shall indemnify and hold TDCC, its agents,
--------------------
directors, officers, employees and Affiliates harmless from and against any
and all liabilities, claims, demands, damages, costs, expenses or money
judgments (including reasonable attorneys' fees and expenses) incurred by
or rendered against any of them for personal injury, sickness, disease or
death or property damage which directly arise out of:
(a) the intentional misconduct or negligence of DIVERSA; or
(b) the breach by DIVERSA of its representations, warranties or covenants
contained in this MCA or any Project Agreement; or
(c) any activity carried out with Enzyme and Licensed Enzyme by DIVERSA
other than through TDCC and its Affiliates under this MCA or Project
Agreement; provided, however, that TDCC shall give DIVERSA notice in
writing in accord with Article 17 as soon as practicable of any such
claim or lawsuit and shall permit DIVERSA to undertake the defense
thereof (including the right to settle the claim solely for monetary
consideration) at DIVERSA's expense. However,
(i) TDCC will cooperate in such defense by providing access to
witnesses and evidence available to it. TDCC shall have the
right to participate in any defense to the extent that in its
judgment, TDCC may be prejudiced thereby; and
(ii) in any claim or suit in which TDCC seeks indemnification by
DIVERSA, TDCC shall not settle, offer to settle or admit
liability or damages in any such claim or suit without the prior
written consent of DIVERSA.
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* CONFIDENTIAL TREATMENT REQUESTED
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<PAGE>
3.8 Indemnity by TDCC - TDCC shall defend, indemnify and hold DIVERSA and its
-----------------
Affiliates, and their respective agents, directors, officers, and employees
harmless from and against any and all losses, liabilities, claims, demands,
damages, costs, expenses or money judgments (including reasonable
attorneys' fees and expenses) incurred by or rendered against any of them
for personal injury, sickness, disease or death or property damage which
arise out of
(i) the development, manufacturing, testing, handling, storage, use,
promotion, sale or distribution of Licensed Products by TDCC or its
Affiliates, except for those instances for which DIVERSA and not
TDCC performs any of these functions; or
(ii) the breach by TDCC of any of its representations, warranties or
covenants contained in this MCA or any Project Agreement; or
(iii) the intentional misconduct or gross negligence of TDCC;
provided, however, that DIVERSA shall give TDCC notice in writing in
accord with Article 17 as soon as practicable of any such claim or
lawsuit and shall permit TDCC to undertake the defense thereof at
TDCC's expense. However,
(i) DIVERSA will cooperate in such defense by providing access to
witnesses and evidence available to it. DIVERSA shall have the
right to participate in any defense to the extent that in its
judgment, DIVERSA may be prejudiced thereby; and
(ii) In any claim or suit in which DIVERSA seeks indemnification by
TDCC, DIVERSA shall not settle, offer to settle or admit
liability or damages in any such claim or suit without the prior
written consent of TDCC.
3.9 [***] - The Parties agree [***].
3.10 Customer MTA - Any transfer of Confidential Information belonging to the
------------
disclosing Party which the receiving Party desires to provide to a
Customer must be done under an appropriate MTA of Appendix D. This
requirement includes samples, know-how, Enzymes, and any other
Confidential Information. A copy of the signed MTA must be supplied by the
Party that is disclosing the Confidential Information to the Party that
owns the Confidential Information.
Article 4. ROYALTIES, REPORTS AND PAYMENTS
4.1 Annual Payment - TDCC shall pay DIVERSA an annual fee for the first year,
--------------
within thirty (30) days of the Signature Date, of [***] and as an annual
fee thereafter by the anniversary of the Effective Date thereafter,
beginning with 2001, of [***] per year for all exclusivity rights under
Project Agreements to retain their exclusivity as well as for retaining the
nonexclusive rights in the Field under this MCA. If TDCC terminates this
MCA then each Project Agreement shall be maintained on its terms, but the
rights to the Field are terminated.
4.2 FTE Payments - TDCC shall pay DIVERSA under each Project Agreement for the
------------
FTE budget, quarterly in advance, and in the amounts as negotiated and set
forth in the applicable Project Agreement. [***].
4.3 Milestone Payments - TDCC shall pay DIVERSA on the first occurrence for
------------------
each Project Agreement of the following events:
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* CONFIDENTIAL TREATMENT REQUESTED
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(a) [***]; or
--
(b) [***].
4.4 Earned Royalty - To be paid for each Project Agreement - TDCC shall pay
-------------- ----
DIVERSA [***].
4.5 [***]
4.6 Enzyme Library Fee - TDCC shall have access to DIVERSA's enzyme
------------------
subscription library for [***] per year for a [***] subscription. A
separate agreement, having at least the standard conditions offered to all
subscribers, shall be provided.
4.7 DIVERSA Payment to TDCC - DIVERSA shall pay TDCC for [***].
-----------------------
4.8 Records -
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4.8.1 TDCC and DIVERSA shall keep accurate records of all operations
affecting payments under this MCA, and shall permit the other
Party's duly authorized agent, which is not unreasonably
objectionable to the Party to inspect all such records during normal
business hours throughout the term of this MCA and for [***] after
termination.
4.8.2 TDCC shall keep accurate records of all operations affecting
payments under each Project Agreement, and shall permit DIVERSA's
duly authorized agent, which is not unreasonably objectionable to
TDCC, to inspect all such records during normal business hours
throughout the term of each Project Agreement and for [***]
thereafter.
4.9 Tax Issues - Any stamp duties or taxes due or paid on behalf of one Party
----------
by the other Party shall be rectified at the end of each calendar year in
the final accounting for that year. [***].
4.10 Payment Addresses - All payments due under Article 4 of this MCA or any
-----------------
Project Agreement shall be made by bank wire transfer in immediately
available funds to:
TDCC at:
[***]
All payment reports due under the MCA shall reference TDCC's agreement
number [***], indicate the amount of payment with the date payment was
made and an itemized listing and be sent to:
The Dow Chemical Company
Royalty Accounting
2020 Dow Center
Midland, MI 48674
USA
DIVERSA at:
[***]
4.11 Late Payments - In the event that the due date of any payment subject to
-------------
this Article 4 (which shall only be deemed late if unpaid after forty-five
days from its due date) is a Saturday, Sunday or holiday, such payment may
be paid on the following business day.
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* CONFIDENTIAL TREATMENT REQUESTED
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Any late payments shall bear interest to the extent permitted by applicable
law at the prime rate (as reported by CitiBank, New York, NY or its
successor), on the date such payment is due plus an additional [***],
calculated on the number of days such payment is delinquent. The rights
provided in this Section 4.9 shall in no way limit any other remedies
available to the Parties hereunder. The defaulting Party may cure in accord
with Section 9.3.
Article 5. CONFIDENTIALITY
5.1 Effort - All Confidential Information shall not be disclosed by the
------
recipient Party to any Third Party without the prior written approval of
the disclosing Party. Each Party shall use good faith efforts to retain in
confidence and not disclose to any Third Party each other's Confidential
Information disclosed pursuant to the terms of this MCA or under the terms
of any Project Agreement. Such "good faith efforts" shall mean the same
degree of care, but no less than a reasonable degree of care, as the
receiving Party uses to protect its own Confidential Information of a like
nature. All Confidential Information initially received in a non-written
form shall be reduced to writing within thirty (30) days by the disclosing
Party and such writing provided to the receiving Party. The receiving
Party shall not be obligated if such writing is not received timely.
Exceptions to this Section 5.1 are stated in Sections 5.4 and 5.5.
5.2 CDA - The terms of the CDA shall remain in effect with regard to all
---
activities between the Parties for the Field prior to the Effective Date.
After the Effective Date the terms of this MCA shall control disclosure
between the Parties for the Field. Should any disclosure occur between the
Parties that falls outside the Field, then only the CDA terms control.
5.3 Governmental Regulatory Submissions - If the MCA or any Project Agreement
-----------------------------------
must be provided to the public or a governmental agency, then redaction of
as many terms as possible from this MCA and Project Agreements, with
notification to the other Party, is required by the disclosing Party.
5.4 Exception for MCA Purpose - Notwithstanding the provisions of Section 5.1,
-------------------------
each Party may use Confidential Information of the other Party only to the
extent required to accomplish the Purpose of this MCA. Because of the
Purpose of this collaboration, the Parties agree that in order to
sublicense or to sell Licensed Products in the Project Field, it may be
necessary to disclose, under a confidentiality agreement (with terms at
least as restrictive as those contained herein) and/or MTA, to a Third
Party some Confidential Information of the Parties. However, before any
such Confidential Information or MTA is signed or transferred with the non-
disclosing Party's Confidential Information, the disclosing Party must
determine whether the Third Party meets [***]. If it does, then no
disclosure may be made of such Confidential Information without the non-
disclosing Party's written consent. If no, then the confidentiality and MTA
mentioned hereinabove must be used. The Party whose Confidential
Information is being so disclosed shall be notified and the identity of the
Third Party provided. Each Party hereby agrees to such disclosure to a
Third Party for the Project Field for the Purpose of this collaboration to
enable marking of the Licensed Products.
5.5 Exception for Legal Reasons - Notwithstanding the provisions of Section
---------------------------
5.1, if the receiving Party becomes legally compelled to disclose any of
the disclosing Party's Confidential Information, the receiving Party shall
promptly advise the disclosing Party of such required disclosure in order
that the disclosing Party may seek a protective order confidential
treatment or such other remedy as the disclosing Party may consider
---------------------
* CONFIDENTIAL TREATMENT REQUESTED
10
<PAGE>
appropriate in the circumstances. The receiving Party shall disclose only
that portion of the Confidential Information that it is legally required to
disclose. Such a disclosure shall not release the receiving Party with
respect to the Confidential Information so disclosed except to the extent
of permitting the required disclosure.
5.6 Disclosure to Affiliates, Contractors - Provided the information is not
-------------------------------------
disclosed to a Third Party who possesses [***] of the non-disclosing Party,
TDCC or DIVERSA may disclose Confidential Information to their Affiliates,
Sublicensees, consultants, contractors (parties under contract with TDCC
for the custom manufacturing or shipping of Licensed Products or obtention
of registration in the Territory), as may be necessary to exercise the
rights granted hereunder and to register and prepare for commercialization
of Licensed Products, and to commercialize Licensed Products under this
MCA, under conditions of confidentiality at least as stringent as those set
out in Article 5.
5.7 Survival of Confidentiality - Termination of this MCA for any reason shall
---------------------------
not relieve the Parties of their obligations under Article 5. The
provisions of Article 5 shall survive termination of this MCA for [***].
Article 6. PUBLICATION
6.1 Rights to Publish in Technical Journals or at Seminars - Each Party and its
------------------------------------------------------
employees shall have the right to publish or present the results of
Licensed Enzymes in the Fields under this MCA, provided such publication or
presentation does not disclose Confidential Information of the other Party,
and further provided that contributions by the other Party to such results
are acknowledged. If the publication is disclosing Enzymes, then the prior
mutual consent of the Parties is required. If consent is not given, no
publication may occur. All publication requests will be reviewed with
consideration of the Purpose and the protection of Patent Rights. The
publishing/presenting Party will submit for review a copy of the proposed
publication (including abstracts, or presentation to a journal, editor,
meeting, seminar or other Third Party) resulting from discovery or use of
the Licensed Enzymes under this MCA to the other Parties at least [***]
prior to submission for publication, and if no response is received within
[***] of the date submitted to the other Party, it may be conclusively
presumed that the publication may proceed without delay. Notwithstanding
this paragraph, if a Sublicensee or Customer exists for a Project Agreement
that would be affected by this publication, then that Sublicensee or
Customer must also consent in writing to this publication.
6.2 Permitted Delay - If a Party determines that the proposed publication
---------------
contains patentable subject matter which requires protection, that Party
may require the delay of the publication for a period of time not to exceed
[***] (or mutually agreed upon time) for the purpose of allowing the
pursuit of such protection. If the Sublicensee or Customer objects to the
publication that impacts its Project Agreement or license, such publication
shall not occur until such consent is given by that Customer or
Sublicensee.
Article 7. INTELLECTUAL PROPERTY RIGHTS
7.1 Inventorship - Inventorship on Patent Rights shall be determined using the
------------
U.S. Patent laws (35 U.S.C et seq.) and regulations (37 C.F.R. et seq.) and
U.S. Federal Court decisions. Because inventorship is a difficult area of
the law, the Parties agree to use their good faith efforts to resolve any
disputes. Should that effort fail, then a mutually agreed upon outside
patent counsel shall make the determination of inventorship and the
-----------------------
* CONFIDENTIAL TREATMENT REQUESTED
11
<PAGE>
Parties shall share equally the costs of that counsel. If Joint Patent
Rights occur each claim shall have its inventorship determined using this
same procedure.
7.2 Ownership and Right to Use -
--------------------------
7.2.1 The first determining factor for ownership of any Patent Rights
shall be which Party is the assignee of the patent or patent
application. For Joint Patent Rights, and contrary to U.S. Patent
laws and court decisions and any laws of other countries, the
assignee of each claim shall determine ownership of that claim and
shall be the determining factor for the right of each Party to
practice each claim.
7.2.2 Each Party shall have a freedom from suit under its Patent Rights
granted by the other Party to perform its obligations for each
Project Agreement under its Work Plans. No Party may use the
Intellectual Property Rights of the other Party for any purpose
other than to perform its obligations under the Work Plans. All
rights to use the other Party's Patent Rights or Know-How cease when
that particular Project Agreement terminates or is completed.
7.2.3 Notwithstanding the termination or completion of the Project
Agreement, if there is a Licensed Product resulting from a Project
Agreement and such Licensed Product is desired by a Customer or
Sublicensee in the Project Field, then to meet the Purpose those
Patent Rights for the Licensed Product may be granted by agreement
(including by label license) to that Customer or licensed to that
Sublicensee and shall not terminate until the respective agreement
or license is terminated or expires or the Patent Rights expire.
7.2.4 To permit the Purpose of the Parties for Licensed Products with
Sublicensees and Customers, the right to practice various claims and
Patent Rights (including required DIVERSA Know-How) shall be
accomplished by a license to TDCC as stated in the attached [***].
This Chart shall only serve to clarify [***]. All Patent Rights to
each indicated license shall be granted for each Project Agreement
by its own attached Patent Rights schedule and all payments for the
license shall be as stated in Article 4, unless modified in the
respective Project Agreement. Each license shall be limited to the
specific Licensed Product for the Project Field.
7.3 Prosecution -
-----------
7.3.1 DIVERSA to Maintain DIVERSA Patent Rights - DIVERSA shall have the
-----------------------------------------
obligation and be responsible, at its own cost and expense, for
prosecuting the patent applications in DIVERSA Patent Rights and for
maintaining, and where possible extending, those DIVERSA Patent
Rights for the term of each Project Agreement to which those rights
pertain.
7.3.2 TDCC to Maintain TDCC Patent Rights - TDCC shall have the obligation
-----------------------------------
and be responsible, at its own cost and expense, for prosecuting the
patent applications in TDCC Patent Rights and for maintaining, and
where possible extending, those TDCC Patent Rights for the term of
each Project Agreement to which those rights pertain.
7.3.3 Maintaining Joint Patent Rights - The Parties shall mutually try to
-------------------------------
agree which Party shall maintain any Joint Patent Rights. One Party
shall have the obligation and be responsible, at its own cost and
expense, for prosecuting the patent applications in Joint Patent
Rights, while consulting with the other Party with respect to its
claims, and for maintaining, and where possible extending, those
--------------------
* CONFIDENTIAL TREATMENT REQUESTED
12
<PAGE>
Joint Patent Rights for the term of each Project Agreement to which
those rights pertain. If the Parties cannot agree which of them
should maintain any particular Joint Patent Right, then they shall
agree on an acceptable outside counsel and each pay one-half of
those costs.
7.3.4 Notice of Patent Lapse of Patent Rights - DIVERSA shall promptly
----------------------------------------
advise TDCC of the grant, lapse, nullification, revocation,
surrender, or invalidation of any of DIVERSA Patent Rights and Joint
Patent Rights, at least in advance of any abandonment to enable TDCC
to assume that prosecution, at TDCC's expense, should TDCC not agree
to such abandonment.
7.4 Validity, Non-Infringement - DIVERSA does not warrant that the manufacture,
--------------------------
use and sale of Licensed Enzymes do not fall within the scope of Third
Party patents or the intellectual property rights of a Third Party.
However, [***].
7.5 Disclaimer of Warranties as to Patent Rights - Other than as stated in
--------------------------------------------
Section 7.3, DIVERSA makes no representation that the inventions covered in
any DIVERSA Patent Rights are patentable or that the DIVERSA Patent Rights
are or will be valid or enforceable, nor does DIVERSA warrant or represent
that the exercise of the rights licensed hereunder is free of infringement
of patent rights of Third Parties.
7.6 Hold Harmless - DIVERSA agrees to hold TDCC harmless for patent
-------------
infringement under any DIVERSA patents or patents licensed to TDCC which
may be otherwise infringed by TDCC's performance under this MCA or any
Project Agreement so long as this MCA or the relevant Project Agreement is
in effect and is not terminated.
7.7 Cooperation - DIVERSA and TDCC shall use good faith efforts to cooperate
-----------
with respect to any issues that concern Patent Rights and the development
of the Licensed Products under this MCA or Project Agreement. [***].
7.7 Third Party Infringement Claims -
-------------------------------
7.7.1 Notice of Claim - In the event that TDCC receives a written notice
---------------
of an allegation of possible patent infringement from a Third Party
or determines that there is such possible infringement based on the
use of an Enzyme or Licensed Enzyme, TDCC shall notify DIVERSA in
writing and [***].
7.7.2 Defense of Third Party Patent Claims - If a claim is brought by a
------------------------------------
Third Party that the manufacture, use or the sale of a Licensed
Enzyme or its use in Licensed Products in the Territory (regardless
of use) infringes a patent of such Third Party, TDCC will give
prompt written notice to DIVERSA of such claim if it concerns
DIVERSA Patent Rights. The Parties shall confer in accord with
Section 7.7.3.
7.7.3 Mutual Decisions - From the Effective Date and using their good
----------------
faith efforts, DIVERSA and TDCC shall discuss any claim or suit
brought by a Third Party for patent infringement and mutually
evaluate whether that Third Party's patent is infringed by the
manufacture, use or sale of any Licensed Enzyme covered in DIVERSA
Patent Rights by TDCC or its Affiliates or Sublicensees in the
Territory. Specifically, DIVERSA and TDCC shall mutually try to
agree on:
(a) the strategy for such suit or claim, e.g. whether to negotiate
a settlement, sue or withdraw selling the Licensed Enzyme or
Licensed Product from the country in the Territory in which
infringement is claimed;
--------------------
* CONFIDENTIAL TREATMENT REQUESTED
13
<PAGE>
(b) the basis to be determined for sharing the costs of litigation,
damages awarded, and royalty to be paid to the Third Party ;
(c) which Party should conduct the defense or if both DIVERSA and
TDCC should jointly defend; and the consequences of such
decisions.
7.7.4 Third Party [***] - TDCC shall use its good faith efforts to [***].
------------
As of the Effective Date for the present Project Agreements for use
of Licensed Enzyme designation for Licensed Products, [***].
7.8 Patent Enforcement & Litigation -
-------------------------------
7.8.1 Enforcement -
-----------
7.8.1.1 If either Party learns of any infringement of DIVERSA Patent
Rights by a Third Party, it shall promptly notify the other
Party.
7.8.1.2 If the possible infringement concerns a Licensed Enzyme that
is competing with TDCC, then DIVERSA shall [***]. DIVERSA
will bear the costs and shall be entitled to any recovery
obtained from such litigation, settlement or compromise
thereof. If DIVERSA elects not to take action for such
infringement, then TDCC may do so at TDCC's expense and shall
[***].
7.8.2 Settlement - Any settlement of an infringement suit, whether brought
----------
by TDCC or by DIVERSA, shall be subject to the consent of both
Parties, which consent shall not be unreasonably withheld. [***].
7.8.3 Cooperation - Each Party shall cooperate with the other Party to the
-----------
extent reasonably requested in any legal action:
(a) related to this MCA or any Project Agreement brought by a Third
Party against one Party; or
(b) related to this MCA or any Project Agreement brought by a Third
Party against both Parties; or
(c) taken against a Third Party by either Party regarding DIVERSA
Patent Rights in the Field in the Territory, and each Party
shall have the right to participate in any defense, compromise
or settlement to the extent that, in its judgment, it may be
prejudiced thereby.
7.9 Marking -
-------
7.9.1 TDCC agrees to mark, where required by law or desired for notice,
all Licensed Enzymes or Licensed Products sold by it to a Third
Party under this MCA, including under any sold that result under
Project Agreements, with the word "Patent" or "Patents" and the
number or numbers of the Licensed Patents applicable thereto.
7.9.2 TDCC agrees (a) to mark any Intermediate or API, that [***] and (b)
to respond to any request for disclosure under 35 U.S.C.
(S)287(b)(4)(B) by notifying DIVERSA of the request for disclosure,
if the Licensed Process Patent is owned by DIVERSA.
-------------------------
* CONFIDENTIAL TREATMENT REQUESTED
14
<PAGE>
7.9.3 This marking requirement may be modified in sublicense agreements,
provided that other adequate notice for damages is provided and any
legal requirements are met.
7.10 Misuse - TDCC shall use its reasonable best efforts to avoid any patent
------
misuse,[***].
7.11 Multipatent Issues - The Parties agree that identical Patent Rights,
------------------
DIVERSA Patent Rights, TDCC Patent Rights, Joint Patent Rights or a
combination of such Patent Rights may be required for each Project
Agreement and that each Project Agreement may differ in the Patent Rights
required as each project will vary within the Field for the Purpose.
Article 8. OPTION TO [***]
8.1 [***].
8.2 [***].
8.3 [***].
Article 9. TERM AND DISENGAGEMENT
9.1 Term -
----
9.1.1 This MCA shall be effective for [***] from the Effective Date,
unless otherwise terminated earlier under Section 9.2. The Parties
may by mutual written consent extend this term.
9.1.2 The term of this MCA is independent of the Project Agreements. Thus
each Project Agreement may continue for the term of its respective
Intellectual Property even if this MCA is terminated earlier.
9.2 Termination -
-----------
9.2.1 By a Party - Either Party may terminate this MCA on [***] written
----------
notice, in accordance with Article 17, to the other Party.
9.2.2 By DIVERSA - If TDCC fails to pay any payments when due under
----------
Article 4 (after notice of default and opportunity to cure), then
DIVERSA may terminate this MCA in accord with Section 9.3.
9.2.3 By TDCC - If DIVERSA fails to pay any payments when due under
--------
Section 4.7 (after notice of default and opportunity to cure), then
TDCC may terminate this MCA in accord with Section 9.3.
9.2.4 Change of Control - TDCC shall have the right to immediately
-----------------
terminate this MCA and any or all Project Agreements upon a Change
of Control of DIVERSA.
9.2.5 Effect of Termination - Project Agreements that have been signed and
----------------------
funded at the time of termination of this MCA shall continue
according to their terms and be exclusive grants for their Licensed
Products or described Project Field.
9.2.6 Project Agreement - Either Party shall have the right to immediately
------------------
terminate each Project Agreement separately, in accordance with
Article 17, if (a) a milestone defined in the Project Agreement is
not achieved, or (b) the Customer
----------------------
* CONFIDENTIAL TREATMENT REQUESTED
15
<PAGE>
for the Project Agreement terminates the program, or (c) the
Sublicensee terminates its license.
9.3 Material Breach.
---------------
In the event that either Party commits a material breach of any obligations
under this MCA and such Party fails to (a) remedy that breach within [***]
after receiving written notice thereof from the non-breaching Party, (b) to
commence dispute resolution under Article 12 within [***] after receiving
written notice thereof from the non-breaching Party, then the non-breaching
Party shall begin dispute resolution under Article 12. Material Breach
includes failure to make any payments when due under this CA or any Project
Agreement. Nevertheless, failure to pay under one Project Agreement or
this MCA is not a breach of any other Project Agreement.
9.4 Effect of Termination; Accrued Obligations.
------------------------------------------
Termination of this MCA or each Project Agreement for any reason shall not
release any Party hereto from any liability which, at the time of such
termination, has already accrued to the other Party or which is
attributable to a period prior to such termination, nor preclude either
Party from pursuing any rights and remedies it may have hereunder or at law
or in equity which accrued or are based upon any event occurring prior to
such termination. All Confidential Information of the other Party shall be
returned immediately at termination.
9.5 Surviving Provisions.
--------------------
On termination of this MCA: the obligations of confidentiality set forth in
Sections 5.1 and 5.2 shall survive for the time stated therein; export
control compliance set forth in Section 11.13 shall survive; the
indemnification obligations set forth in Article 11 and Third Party
infringement claims set forth in Section 7.7 shall survive as to all claims
or actions arising from events which occurred before termination. Article
12 shall survive termination of this MCA so long as any disputes arising
prior to such termination exist. Section 7.1 of this MCA shall survive the
expiration or termination of this MCA for any reason.
Article 10. PRODUCT LIABILITY AND INDEMNIFICATION
10.1 Indemnification Under the MCA -
------------------------------
Neither Party shall indemnify the other Party nor its Affiliates, or
respective officers, directors, employees and agents and its respective
successors, heirs and assigns ("Indemnitees"), except for its respective
gross negligence, for any actions or product liability concerning any
Licensed Product. This paragraph does not limit either Party's other
remedies available to it under the law with respect to Licensed Products.
TDCC shall provide for product liability indemnification for Licensed
Products from all its Sublicensees.
10.2 Procedure.
---------
10.2.1 A Party that intends to claim indemnification under this Article 10
(the "Indemnitee") shall promptly notify the other Party (the
"Indemnitor") in writing of any loss, claim, damage, liability or
action in respect of which the Indemnitee or any of its Affiliates
or their directors, officers, employees, agents, consultants or
counsel intend to claim such indemnification, and the Indemnitor
shall have the
----------------------
* CONFIDENTIAL TREATMENT REQUESTED
16
<PAGE>
right to participate in, and, to the extent the Indemnitor so
desires, to assume the defense thereof with counsel of its own
choice.
10.2.2 The indemnity agreement in this Article 10 shall not apply to
amounts paid in settlement of any loss, claim, damage, liability or
action if such settlement is made without the consent of the
Indemnitor, which consent shall not be withheld unreasonably. The
failure to deliver written notice to the Indemnitor within a
reasonable time after the commencement of any such action, if
prejudicial to its ability to defend such action, shall relieve
such Indemnitor of any liability to the Indemnitee under this
Article 10.
10.2.3 At the Indemnitor's request, the Indemnitee under this Article 10,
and its employees and agents, shall cooperate fully with the
Indemnitor and its legal representatives in the investigation and
defense of any action, claim or liability covered by this
indemnification and provide full information with respect thereto.
Article 11. EXPORT AND COMPLIANCE WITH LAWS
11.1 The Export Administration Regulations of the United States Department of
Commerce (EAR) prohibit, except under an individual validated license, the
exportation from the United States of technical data relating to certain
commodities (listed in the Export Administration Regulations), unless TDCC
or its Sublicensee has received certain written assurances from the
foreign importer. TDCC hereby agrees to comply with the EAR and shall
provide that any Sublicensee shall also promise to comply.
11.2 If DIVERSA exports technical data, Enzymes or Licensed Enzymes it hereby
agrees to comply with the EAR.
11.3 TDCC agrees to obtain, or shall have its Sublicensee obtain, all necessary
clearances from any government in the Territory for export or re-export
with respect to Licensed Products.
11.4 This MCA, including all Project Agreements, shall be subject to all the
United States government, State and local laws and regulations now or
hereafter applicable to the subject matter of this MCA. Both Parties agree
to comply with all of these applicable laws.
Article 12. DISPUTE RESOLUTION
12.1 Choice of Law - This MCA and all Project Agreements shall be governed by
-------------
the laws of the State of Delaware, excepting its conflict of laws
principles, in all respects of validity, construction and performance,
except that all questions concerning the construction, validity, coverage
or infringement of DIVERSA Patent Rights or Joint Patent Rights shall be
decided in accordance with the patent law of the country where the patent
was granted.
12.2 Disputes - Both Parties shall make good faith efforts to resolve any
--------
questions concerning construction and performance under this MCA and all
Project Agreements, excluding DIVERSA Patent Rights and antitrust issues
(which are settled by court proceeding in the concerned country), by:
12.2.1 Notice, contact and negotiation, all proceedings and documents in
English, between the Parties listed under Article 17.1 within one
hundred twenty (120)
17
<PAGE>
days from the date of the notice by negotiation either by telephone
or by meeting in Denver, CO; and
12.2.2 If unsuccessful under Article 12.2.1, then senior executive
management with settlement authority and counsel of TDCC and
DIVERSA shall meet at a mutually agreeable neutral location within
sixty (60) days from a date of notice that Article 12.2.1 failed to
resolve the issues. Counsel shall present the legal and factual
arguments to such executives in English, with supporting evidence
if necessary, and resolution by these executives is expected within
ten (10) business days therefrom , which may be reduced to writing
in English as an amendment to this MCA; and
12.2.3 If such executives have not met or resolved the issues under
Article 12.2.2, then within seventy five (75) days from the date of
the notice under Article 12.2.1, the Parties shall submit the
issues to mediation in Chicago, IL, in English, in accordance with
the Rules of the American Arbitration Association ("AAA"), which
may be modified by the Parties, and judgment shall be binding. The
Parties agree that the following procedures shall be adhered to
even though they may, in part, not be in full conformance with said
Rules:
(a) Three Mediators shall be selected from a list of at least 20
arbitrators selected by the AAA composed of counsel with
chemistry, molecular biology, chiral chemistry or
pharmaceutical expertise who are practicing or retired partners
in law firms or in-house corporate counsel not affiliated with
the Parties with at least 15 years of experience in law and
knowledge of the pertinent laws of any country relevant to the
dispute. If the dispute issue is relevant for a commercial
expert to advise the Mediators, one expert selected by the
mediators may be used. The mediation proceedings and reports
shall be in English. The time from the beginning of submission
for mediation and conclusion of any oral or written proceedings
shall not exceed six (6) months; and
(b) Limited discovery to only that which each Party has a
substantial, demonstrable need, and shall be conducted in the
most expeditious and cost-effective manner. The Mediators shall
resolve any issues with regard to the discovery. Decision by
the Mediators shall be given in writing within thirty (30) days
from the end of oral proceedings; and
(c) The decision by the Mediators is binding, but should either
Party then need to have a Court of competent jurisdiction for
the Parties enforce the decision, either Party may introduce
into court the decision reached by Mediation with its
supporting evidence.
Article 13. REPRESENTATIONS AND WARRANTIES
13.1 Organization - Each Party states that it is a corporation duly organized,
------------
validly existing and is in good standing under the laws of the
jurisdiction of its incorporation or organization, is qualified to do
business and in good standing as a foreign corporation in each
jurisdiction in which the performance of its obligations hereunder
requires such qualification and has all requisite power and authority,
corporate or otherwise, to conduct its business as now being conducted, to
own, lease and operate its properties and to execute, deliver and perform
this MCA and all Project Agreements.
13.2 Authorization - The execution, delivery and performance by it of this MCA
-------------
and all Project Agreements have been duly authorized by all necessary
corporate action and
18
<PAGE>
do not and will not: (a) require any consent or approval of its
stockholders or (b) violate any provision of any law, rule, regulation,
order, writ, judgment, injunction, decree, determination or award
presently in effect having applicability to it or any provision of its
charter documents.
13.3 Binding Agreement - This MCA is a legal, valid and binding obligation of
-----------------
it, enforceable against it in accordance with its terms and conditions.
Each Project Agreement shall also be a legal, valid and binding obligation
of it, enforceable against it in accordance with its respective terms and
conditions.
13.4 Warranty Disclaimer - EXCEPT AS OTHERWISE EXPRESSLY PROVIDED IN THIS MCA,
-------------------
NEITHER Party MAKES ANY REPRESENTATION OR WARRANTY OF ANY KIND, EXPRESS OR
IMPLIED, WITH RESPECT TO ANY Confidential Information, DIVERSA Patent
Rights, Know-How, Licensed Enzymes, Licensed Products, Intermediates, APIs
OR OTHER TECHNOLOGY, GOODS, SERVICES, RIGHTS OR OTHER SUBJECT MATTER OF
THIS MCA AND HEREBY DISCLAIMS ANY WARRANTY OF MERCHANTABILITY, FITNESS FOR
A PARTICULAR PURPOSE, NON-INFRINGEMENT, OR VALIDITY OF TECHNOLOGY OR
PATENT CLAIMS, ISSUED OR PENDING, WITH RESPECT TO ANY AND ALL OF THE
FOREGOING.
13.5 Limited Liability - EXCEPT AS EXPRESSLY PROVIDED HEREIN, NEITHER DIVERSA
-----------------
NOR TDCC WILL BE LIABLE TO THE OTHER Party WITH RESPECT TO ANY SUBJECT
MATTER OF THIS MCA UNDER ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY OR
OTHER LEGAL OR EQUITABLE THEORY FOR (a) ANY SPECIAL, INDIRECT, INCIDENTAL,
CONSEQUENTIAL OR PUNITIVE DAMAGES OR LOST PROFITS OR (b) COST OF
PROCUREMENT OF SUBSTITUTE GOODS, TECHNOLOGY OR SERVICES.
Article 14. BANKRUPTCY
14.1 DIVERSA Bankruptcy - If DIVERSA files for protection under bankruptcy
------------------
laws, makes an assignment for the benefit of creditors, appoints or
suffers appointment of a receiver or trustee over its property, files a
voluntary petition under any bankruptcy or insolvency act or has any such
petition filed against it which is not discharged within sixty (60) days
of the filing thereof, then the rights and licenses granted under or
pursuant to this MCA shall be deemed to be, for purposes of Section 365(n)
of the US Bankruptcy Code (11 U.S.C.), licenses or rights to "intellectual
property" as defined under Section 101(52) of the US Bankruptcy Code.
DIVERSA agrees that TDCC, as a licensee of such rights under this MCA,
shall retain and may fully exercise all of its rights and elections under
the US Bankruptcy Code, subject to performance by the licensee of its
preexisting obligations under this MCA.
14.2 TDCC Bankruptcy - If TDCC files for protection under bankruptcy laws,
---------------
makes an assignment for the benefit of creditors, appoints or suffers
appointment of a receiver or trustee over its property, files a voluntary
petition under any bankruptcy or insolvency act or has any such petition
filed against it which is not discharged within sixty (60) days of the
filing thereof, then the rights and licenses granted under or pursuant to
this MCA shall be deemed to be, for purposes of Section 365(c) and (e)(2)
of the US Bankruptcy Code (11 U.S.C.), licenses or rights to "intellectual
property" as defined under Section 101(52) of the US Bankruptcy Code. TDCC
agrees that DIVERSA, as a licensor of such rights under this MCA, shall
retain and may fully exercise all of its rights and elections under the US
Bankruptcy Code, including it right to immediately terminate this MCA.
Notwithstanding the provisions of this Section 14.2, such right of
termination shall not
19
<PAGE>
extend to any TDCC Sublicensees providing that those Sublicensees are
performing in accord with their obligations under this MCA and Sublicensee
agreement.
Article 15. FORCE MAJEURE
15.1 Neither Party shall be liable to the other Party for failure of or delay
in performing obligations set forth in this MCA, and neither Party shall
be deemed in breach of its obligations, if such failure or delay is due to
natural disasters or any other cause beyond the reasonable control of a
Party, and notice of such prevention of prevention of performance is
promptly provided by the non-performing Party in accordance with Section
17.1. Such excuse shall be continued so long as the condition constituting
force majeure continues and the non-performing Party takes reasonable
efforts to remove the condition.
15.2 In event of such force majeure, the Party affected thereby shall use
reasonable efforts to cure or overcome the same and resume performance of
its obligations hereunder.
Article 16. ASSIGNMENT AND SUCCESSORS
16.1 The Parties agree this MCA imposes personal obligations on both Parties.
Neither Party shall assign any rights under this MCA not specifically
transferable by its terms without the prior written consent of the other
Party, except that each Party may, without such consent, assign this MCA
and the rights, obligations and interests of such Party, in whole or in
part, including one or more of the Project Agreements, to any of its
Affiliates so long as such Affiliate can perform that Party's obligations.
16.2 If any Change of Control of a Party occurs and an assignment to such
purchaser or other transferee of all or substantially al of its assets in
the line of business to which this MCA or any one of the Project
Agreements pertains, or to any successor corporation resulting from any
merger or consolidation of such Party with or into another entity, then
the other Party may immediately terminate this MCA or any of the Project
Agreements. In the event of any merger or consolidation by a Party into
another entity, such Party shall promptly notify the other Party in
writing of such merger or consolidation ad the obligations under this MCA
shall be maintained and performed by the successor entity unless modified
in accordance with Section 18.6 or terminated in accordance with Article
9.
Article 17. NOTICE
17.1 For the purpose of all written communications and notices between the
Parties under this MCA, any notice shall be shall be sent by overnight
courier, registered mail, or facsimile to each Party as follows:
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If to DOW:
The Dow Chemical Company
[***]
Attention: [***]
Telephone: [***]
Facsimile: [***]
with a copy to:
The Dow Chemical Company
[***]
Attention: [***]
Telephone:
Facsimile:
To DIVERSA:
Diversa Corporation
10665 Sorrento Valley Road
San Diego, CA 92121
Attention: Patrick McCroskey, PhD
Sr. Director, Business Development
Telephone: 858-623-5179
Facsimile: 858-626-3779
with a copy to:
Diversa Corporation
10665 Sorrento Valley Road
San Diego, CA 92121
Attention: Carolyn Erickson
Vice President, Intellectual Property
Telephone: 858-623-5104
Facsimile: 858-453-9133
17.2 Either Party may amend its persons to receive notice or supply any other
address for service by notifying the other Party in writing.
Article 18. MISCELLANEOUS PROVISIONS
18.1 Headings - Headings in this MCA are included herein for ease of reference
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and shall not affect the meaning of the provisions of this MCA, nor shall
they have any other legal effect.
18.2 Interpretation - The Parties acknowledge and agree that: (a) each Party
--------------
and its counsel reviewed and negotiated the terms and provisions of this
MCA and have contributed to its revision; (b) the rule of construction to
the effect that any ambiguities are resolved against the drafting Party
shall not be employed in the interpretation of this MCA; and (c) the terms
and provisions of this MCA shall be construed fairly as to all Parties
hereto and not
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in favor of or against any Party, regardless of which Party
was generally responsible for the preparation of this MCA.
18.3 Integration, Preclusion Of Prior Understandings - This MCA and its
-----------------------------------------------
attachments, including all Project Agreements, represents the entire
understanding between the Parties with respect to the Field, and
supersedes all other agreements, express or implied, between the Parties.
18.4 Applicable Law - This MCA shall be construed in accordance with the laws
--------------
of the United States if a federal issue, or the laws of the State of
Delaware if a state issue, as interpreted by the courts in the State of
Delaware, without regard to choice of law provisions of such laws.
18.5 Severability -
------------
18.5.1 The Parties agree that if any part, term, or provision of this MCA
shall be found illegal or in conflict with or unenforceable under
any valid controlling body of law, the validity of the remaining
provisions shall not be affected thereby.
18.5.2 In the event the legality of any provision of this MCA is brought
into question because of a decision by a court of competent
jurisdiction of any country in which this MCA applies, TDCC, by
written notice to DIVERSA in accordance with Article 17, may revise
the provision in question or may delete it entirely so as to comply
with the decision of said court.
18.6 Alteration - A provision of this MCA may be altered only by a writing
----------
signed by both Parties, except as provided in Section 12.5. A provision of
this MCA may be altered for a specific Project Agreement by the terms of
that Project Agreement.
18.7 Waiver, Cumulative Remedies - The waiver by either Party of any term or
---------------------------
condition of this MCA in any one instance shall not be deemed construed to
be a waiver of such term or condition for any similar instance in the
future or of any subsequent breach hereof. Such waiver may be effected
only by a written document signed by the waiving Party. All rights,
remedies, undertakings, obligations and agreements contained in this MCA
shall be cumulative and none of them shall be a limitation of any other
remedy, right, undertaking, obligation or agreement of either Party.
18.8 Registration And Recordation -
-----------------------------
18.8.1 Each Party agrees to execute such additional papers or documents
in customary legal form and to make such governmental filings or
applications as may be necessary or desirable to effect the
Purpose of this MCA and carry out its provisions. Examples of such
documents are material transfer agreements and confidentiality
agreements with a Third Party.
18.8.2 If the terms of this MCA are such as to require or make it
appropriate that this MCA or any part of it, or any Project
Agreement hereto, be registered with or reported to a national or
supranational agency of any area in which TDCC or its Sublicensee
will do business under this MCA, TDCC or its Sublicensee shall
undertake such registration or report at its expense. Prompt notice
and appropriate verification of the act of registration or report
of any agency ruling resulting from it will be supplied by TDCC to
DIVERSA.
18.9 Publicity -
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18.9.1 Neither Party shall make the financial terms of this MCA public,
except as required by law or by mutual consent. Either Party may
make such disclosure of the existence of this MCA to its
attorneys, advisors, investors, prospective investors, lenders and
other financing sources, under circumstances that
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reasonably ensure confidentiality. In the event that a filing of a
copy of this MCA with the US Securities and Exchange Commission is
required, then DIVERSA and TDCC shall seek confidential treatment
of information considered confidential by either Party and shall
redact the financial and as much other information a possible.
18.9.2 Any press release or publicity of this MCA shall be reviewed and
approved by both Parties prior to any release. It is expected that
a Q&A outline for use in responding to inquires about this MCA
shall be prepared and used by both Parties. Thereafter both
Parties may disclose the information contained in such press
release and Q&A outline without the need for further approval. In
no event shall the financial terms of this MCA be publicly
disclosed, except as noted in Sections 12.8.2 and 12.9.1.
18.10 No Agency or Partnership - Nothing contained in this MCA shall give
------------------------
either Party the right to bind the other Party, or be deemed to
constitute either Party as an agent for the other Party or as a partner
with the other Party or any Third Party. Nevertheless both Parties may
represent to a Third Party that they are collaborating together for the
Field without any agency or partnership implied.
IN WITNESS WHEREOF, each of the Parties hereto has caused this MCA to be
executed in duplicate originals by its duly authorized officers or
representatives on the dates set forth below. This MCA may be signed in
separate counterparts by facsimile with original signatures bearing the same
date as the facsimile provided promptly thereafter. The Parties expect that
this MCA will depend upon execution of at least one Project Agreement having the
same Effective Date as this MCA and other Project Agreements thereafter. This
MCA shall be void ab initio if not signed by both Parties within [***].
Diversa Corporation The Dow Chemical Company
/s/ Jay M. Short [***]
_____________________________ ____________________________________
Jay M. Short, PhD [***]
Chief Executive Officer
Date: _______________________ Date: ______________________________
. [***]
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* CONFIDENTIAL TREATMENT REQUESTED