License Agreement - Invitrogen Corp. and Diversa Corp.
LICENSE AGREEMENT
This Agreement is made as of the 29/th/ day of March, 1999 by and between
Invitrogen Corporation, a corporation organized and existing under the laws of
the State of Delaware, with principal offices located at 1600 Faraday Avenue,
Carlsbad, California, 92008, ("Licensor") and Diversa Corporation, having its
principal place of business 10665 Sorrento Valley Road, San Diego, CA 92121
("Licensee").
1. Definitions
1.1 Affiliate means any business entity controlled by or under common
control with Licensee. For the purposes hereof, "control" shall mean, as to any
entity, effective ownership of greater than [*****] of the [*****].
1.2 Licensed Patent Rights means the United States Patent Application
[*****] and [*****] licensed to Licensor, including all [*****] and [*****] Said
list will be periodically updated by Licensor.
1.3 Licensed Products means any [*****] or any [*****].
1.4 Net Sales means the dollar amount of [*****] of Licensed Product(s) by
Licensee and/or Affiliates, less [*****].
1.5 Effective Date means the first date appearing above.
1.6 Field Of Use means [*****]. For purposes of this paragraph "Licensee's
proprietary technology" shall mean technology within the ambit of any claim in
an issued or pending patent claim of [*****] and any [*****].
1.7 Territory means the world.
2. License Grant
2.1 Licensor hereby grants to Licensee and Licensee accepts, subject to
the terms and conditions of this Agreement, an exclusive license to practice
Licensed Patent Rights in the Field Of Use in order to make, but not to have
made, use, and sell Licensed Products throughout the Territory for the term of
this Agreement.
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2.2 Additionally, Licensor hereby grants to Licensee and Licensee accepts,
subject to the terms and conditions of this Agreement, a non-exclusive license
to use Licensed Patent Rights for [*****] for Licensee's [*****]. "[*****]"
shall include [*****] and excludes [*****] Notwithstanding the foregoing,
Licensee shall be free to commercialize any product resulting from Licensee's
use of the Licensed Patent Rights in its research and discovery without
incurring any further royalty obligations.
2.3 For purposes of Licensee's practice of the [*****], Licensor shall
provide Licensee annually with [*****] as set forth in Exhibit A hereto.
Licensee may purchase
additional quantities of [*****] needed subject to the pricing schedule set
forth in Exhibit A. In the event that Licensor sells [*****] to a third party
for a [*****] than that set forth on Exhibit A, then such [*****] shall be
extended to Licensee.
2.4 Licensee shall have the right to extend the licenses granted herein to
Affiliates subject to the terms and conditions of this Agreement. Licensee shall
have no right to grant sublicenses hereunder.
3. License Grant Fee
3.1 In consideration for the license granted under paragraph 2.1, Licensee
agrees to pay to Licensor a [*****] license grant fee of [*****] United States
dollars payable within [*****] following the execution of this Agreement.
3.2 Licensee further agrees to pay Licensor an annual license maintenance
fee in the sum of [*****] payable beginning [*****] from the end of the [*****]
following the EFFECTIVE DATE of this Agreement and continuing [*****] for the
life of this Agreement.
3.3 In consideration of the license granted in paragraph 2.2, Licensee
shall [*****] grant to Licensor a first option for a license to make, use,
import, offer and sell in the research reagent market, as described below, at
least [*****], but no more than [*****] of Licensee's [*****]. Such enzymes
shall be selected from (i) Licensee's [*****] DNA modifying [*****] enzymes
[*****] or (ii) novel DNA modifying [*****] enzymes [*****] during the term of
the Agreement provided; however, that [*****] ((i) and (ii) are collectively
referred to below as [*****]). Prior to transfer, Licensee will provide [*****]
as well as other information if available, for the [*****] and [*****]. In the
event that Licensor finds that any such [*****] as represented by
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Licensee, then Licensee shall provide [*****]. Licensee may, in its sole
discretion, also provide [*****] as they become available to Licensor, which
Licensor shall use solely for the purpose of [*****] which may be licensed
hereunder. Licensor may exercise its option on up to [*****] within [*****]. In
the event that, by the [*****] of this Agreement, either (i) Licensee has not
provided [*****] to Licensor for evaluation as set forth herein or (ii) Licensor
has not exercised its option to license at least [*****] as set forth hereunder,
then [*****].
For clarity, "first option" means [*****].
3.4 Licensor may exercise such option by written notice to Licensee at any
time up to [*****] from the date Licensee provides [*****] to Licensor for
evaluation. Each [*****] shall be provided to Licensor by Licensee one time only
and each transfer shall be under the terms of a materials transfer agreement in
substantially the same form as Exhibit B hereto ("MTA"). Upon such notice of
option exercise by Licensor the parties shall enter into license negotiations
for the research reagent market. Such license shall not require any [*****] but
shall include, but not be limited to, a royalty rate of between [*****], a
provision that Licensee shall be named as the source of products licensed
thereunder in all [*****] and such other terms and conditions as are
commercially reasonable and customary in such agreements.
4. License Term
4.1 The license agreement will remain in effect the later of [*****] or
for so long as there are patents within License Patent Rights still in force.
5. Royalties
5.1 Commencing on the Effective Date, Licensee shall pay to Licensor
during the term of this agreement a royalty of [*****] sold under the license
granted in paragraph 2.1.
5.2 In the event that the royalty burden on any given Licensed Product is
increased due to the need for licensing additional components, the royalty
payable hereunder will be reduced by [*****] for each additional [*****] due to
third parties. Notwithstanding the foregoing, in no event shall the royalty due
Licensor be reduced to [*****] of the royalty specified in paragraph 5. 1.
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6. Reporting
6.1 Licensee shall submit to Licensor within [*****] after the end of each
[*****] during the term of this Agreement, reports setting forth for the
preceding [*****] the following information:
(1) the number of each Licensed Product sold by Licensee and its
Affiliates;
(2) total billings for each Licensed Product;
(3) deductions applicable to determine the Net Sales thereof; and
(4) the amount of royalty due with respect to Licensee' sale of each
Licensed Product;
and with each such report pay the amount of royalty due. Such report shall be
certified as correct by an officer of Licensee.
6.2 All payments due hereunder shall be payable in United States dollars.
Conversion of foreign currency to U.S. dollars shall be made at the conversion
rate existing in the United States as reported in the Wall Street Journal on the
last working day of each royalty reporting period.
6.3 Late payments shall be subject to an interest charge of [*****].
Interest shall be calculated pro rata for lateness that includes [*****].
7. Record Keeping
7.1 Licensee shall keep, and shall require its Affiliates to keep accurate
and correct records of Licensed Products made, used or sold under this Agreement
appropriate to determine the amount of royalties due hereunder to Licensor. Such
records shall be retained for [*****] following a given reporting period. They
shall be available during normal business hours for
inspection at the expense of Licensor for the sole purpose of verifying reports
and payments hereunder. In the event that an inspection shows an under reporting
and underpayment in excess of [*****] for any [*****] period, then Licensee
shall pay the cost of such inspection as well as any additional sum that would
have been payable to Licensor had Licensee reported correctly, plus interest due
for lateness as specified above.
8. Intellectual Property Rights
8.1 All right, title and interest in and to all inventions, compositions,
and methods [*****] shall be owned by Licensee.
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8.2 All right, title and interest in and to all inventions, compositions,
and methods [*****] shall be owned by Licensor.
8.3 All right, title and interest in and to all inventions [*****] shall
be owned jointly by Licensor and Licensee.
8.4 Licensor will automatically receive a royalty free, paid-up non-
exclusive license to [*****] for all purposes outside the Field Of Use.
8.5 Licensee will automatically receive a non-exclusive license to
[*****], without further license grant fees, but with running royalties payable
according to Section 5.
8.6 Exclusive licenses between the parties for Joint Inventions may be
granted and shall be negotiated in good faith.
9. Infringement
9.1 Licensee shall promptly notify Licensor of any suspected infringement
of any Licensed Patent Rights by a third party. Licensee and Licensor each shall
have the right to institute an action of infringement in the Field Of Use of the
Licensed Patent Rights in accordance with the following:
(a) If Licensor and Licensee agree to institute suit jointly, the
suit shall be brought in both their names, the out-of-pocket costs thereof shall
be borne equally, and any recovery or settlement shall be shared equally.
Licensee and Licensor shall agree on the manner in which they shall exercise
control over such action. Licensor may be represented, if it so desires, by
separate counsel of its own selection, the fees for which shall be paid by
Licensor.
(b) In the absence of an agreement to institute a suit jointly,
Licensor may institute suit and, at its option, join Licensee as a plaintiff.
Licensee shall execute all papers and perform such other acts as may be
reasonably required in the circumstances, at the expense of Licensor. Licensor
shall bear the entire cost of such litigation and shall be entitled to retain
the entire amount of any recovery or settlement.
(c) In the absence of an agreement to institute a suit jointly and if
Licensor notifies Licensee that it has decided not to join in or institute a
suit, as provided in (a) or (b) above, Licensee may institute a suit and, at its
option, join Licensor as a plaintiff. Licensor shall
execute all papers and perform such other acts as may be reasonably required in
the circumstances, at the expense of Licensee. Licensee shall bear the entire
cost of such litigation and shall be entitled to retain the entire amount of any
recovery or settlement.
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(d) If Licensor decides to institute suit, it shall notify Licensee
in writing within [*****]. Licensee's failure to notify Licensor in writing,
within [*****] after the date of Licensor's notice, that it will join in
enforcing the patent pursuant to the above provisions shall constitute an
assignment by Licensee to Licensor all rights, causes of action and damages
resulting from any infringement alleged in the suit and Licensor shall be
entitled to retain the entire amount of any recovery or settlement.
(e) Should either Licensee or Licensor commence a suit under the
above provisions and thereafter elect to abandon same, it shall give timely
notice to the other party who may, at its discretion, continue prosecution of
the suit. The parties will negotiate in good faith to allocate the expenses and
proceeds of such suit.
9.2 In the event that a declaratory judgment action alleging invalidity
of any of the Licensed Patent Rights shall be brought against Licensee or
Licensor, then Licensor, at its sole option, shall have the right to intervene
and take over the sole defense of such action at its own expense. Licensor shall
have exclusive control of any enforcement of Licensed Patent Rights outside the
Field Of Use.
10. Termination
10.1 The obligation to pay royalties on a Licensed Product shall expire
when all patents within Licensed Patent Rights covering that Licensed Product
have expired in the jurisdiction where the Licensed Product is sold to its
ultimate consumer.
10.2 In the event Licensee fails to make payments due hereunder, Licensor
shall have the right to terminate this Agreement upon ninety (90) days written
notice, unless within the ninety (90) day notice period Licensee makes all
outstanding payments plus interest.
10.3 In the event that Licensee shall be in default in the performance of
any obligation under this Agreement (other than as provided in 10.2 above), and
if the default has not been remedied within ninety (90) days after the date of
notice in writing specifying the nature of such default, Licensor may terminate
this Agreement immediately by further written notice to Licensee.
10.4 This Agreement and all licenses granted under it shall terminate
automatically should Licensee commit any act of bankruptcy, become insolvent,
file a petition under any bankruptcy or insolvency act, or have any such
petition filed against it, or make any assignment for the benefit of its
creditors.
10.5 Licensee shall have the right to terminate this Agreement for any
reason or no reason upon ninety (90) days written notice to Licensor.
10.6 In the event of any termination or expiration, Licensee shall have
the right to continue selling Licensed Products until finished goods in
existence on the date of final notice of termination are sold, or [*****]
whichever is sooner, provided however that such right shall not apply to
voluntary termination under paragraph 10.5. Such sales will be subject to the
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provisions of the Agreement. Following the [*****] or immediately upon the
effective date of a termination under paragraph 10.5, Licensee will destroy all
remaining materials which may be used to practice Licensed Patent Rights, or
which were produced under licenses granted herein and an officer of Licensee
shall certify such destruction to Licensor in writing under oath.
11. Breach And Cure
11.1 In addition to applicable legal standards, Licensee shall be in
material breach of this Agreement for failure to pay any fees under Section III
or any royalties pursuant to Section V.
11.2 Either party shall have the right to cure its material breach. The
cure shall be effected within a reasonable time but in no event later than
[*****] after written notice of breach given by the party claiming breach and
specifying the nature of the breach.
12. Warranty
12.1 Licensor represents and warrants it has the authority to issue the
licenses granted herein under License Patent Rights. Licensor warrants that, as
of Effective Date, it has disclosed to Licensee any claims, rights or
allegations by third parties of which it is aware which may conflict or overlap
with License Patent Rights. Licensor does not warrant the validity of the
License Patent Rights licensed hereunder and makes no representation whatsoever
with regard to the scope of the License Patent Rights, or that such License
Patent Rights may be exploited by Licensee or an Affiliate of Licensee without
infringing other patents. Licensor EXPRESSLY DISCLAIMS ANY OTHER IMPLIED OR
EXPRESS WARRANTIES AND MAKES NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY
OR FITNESS FOR ANY PARTICULAR PURPOSE OF THE LICENSED PATENT RIGHTS OR LICENSED
PRODUCTS CONTEMPLATED BY THIS Agreement.
13. Indemnification
13.1 Licensee shall indemnify, defend and hold harmless Licensor against
any liability, damage, loss or expense (including reasonable attorneys' fees and
expenses of litigation) incurred by or imposed upon Licensor in connection with
any claim, suit, action, demand or judgment arising out of any theory of product
liability (including, but not limited to, actions in the form of tort, warranty,
or strict liability) relating to any product, process or service made, used or
sold pursuant to any right or license granted under this Agreement.
14. Publicity
14.1 All public announcements regarding the existence or terms of this
Agreement shall be coordinated between Licensor and Licensee and shall be made
only by mutual agreement.
15. Notices
15.1 Notices regarding termination of this Agreement shall be made by
certified mail, return
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receipt requested or by a courier service requiring a signature upon receipt.
15.2 All other notices or documents to be given hereunder may be sent in a
pre-paid letter to the address of the relevant party set out in this Agreement
or to such other address as the parties may designate in writing for the
purposes of this part. Any notice sent by U.S. Mail shall be deemed (in the
absence of evidence of earlier receipt) to have been delivered [*****] after
dispatch.
16. Miscellaneous
16.1 This Agreement shall be governed by [*****] law applicable to
agreements made and to be performed in [*****].
16.2 This Agreement shall be binding on the parties hereto and upon their
respective heirs, administrators, successors and assigns. This Agreement may not
be assigned by either party without the written consent of the other party,
except that Licensee may assign this Agreement as part of a sale of transfer of
all, or substantially all, of the assets of Licensee to which the Agreement
relates.
16.3 This Agreement sets forth the entire agreement between the parties
concerning the subject matter hereof and merges all previous agreements or
communications.
16.4 Should any provision of this Agreement be held invalid, illegal or
unenforceable by a court of competent jurisdiction, such provision shall be
considered void. All other provisions, rights and obligations shall continue
without regard to such holding.
16.5 No amendment or modification of this Agreement shall be valid or
binding upon the parties unless made in writing and signed by both parties.
16.6 A waiver by either party of a breach by the other of any term of this
Agreement shall not prevent the subsequent enforcement of that term and shall
not be deemed a waiver of any subsequent, prior or continuing breach.
In Witness Whereof, the Licensor and Licensee have executed this Agreement as of
the Effective Date.
Licensor, by: Licensee, by:
/s/ Warner Broadus /s/ Carolyn Erickson
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Signature Signature
Warner Broadus Carolyn Erickson
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Printed Name Printed Name
General Counsel & Assistant Secretary Director, IP
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Title Title
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EXHIBIT A
Included in the Agreement: [*****].
Licensee may purchase [*****].
A-1. *Confidential Treatment Requested
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EXHIBIT B
Materials Transfer Agreement
Effective as of ____________, 1999, this Agreement ("Agreement") is made and
entered into by and between Diversa Corporation, a Delaware corporation with
headquarters at 10665 Sorrento Valley Road, San Diego, CA 92121 (hereinafter
"Diversa"), and _____________, a ___________________ corporation with
headquarters at ____________________________ (hereinafter "Recipient"),
collectively known as "The Parties."
WHEREAS, Diversa will provide Recipient with [*****] as set forth in Exhibit A
attached hereto and hereinafter referred to as "Material";
WHEREAS, Recipient desires to evaluate the Material;
WHEREAS, Recipient is willing to receive the Material pursuant to the terms and
conditions of this Agreement;
WHEREAS, Diversa agrees to provide the Material to Recipient pursuant to the
terms and conditions of this Agreement;
NOW THEREFORE, in consideration of the mutual promises and covenants herein
contained, the Parties mutually agree to the following terms:
1. Diversa will provide to Recipient the following Material: Diversa shall
provide Recipient with [*****] set forth in Exhibit A to allow Recipient to
[*****].
2. Recipient agrees that the Material shall be used solely for the purpose of
evaluation of the potential usefulness of the Material in Recipients
processes. The Material shall not be used in research that is subject to
consulting or licensing obligations of any third party without the prior
written consent of Diversa.
3. The Material delivered hereby is experimental in nature. DIVERSA MAKES NO
WARRANTIES, EXPRESS OR IMPLIED, INCLUDING ANY WARRANTY OF MERCHANTABILITY
OR FITNESS FOR A PARTICULAR PURPOSE. Diversa makes no representation that
the use of the Material will not infringe any patent or proprietary rights
of third parties.
4. Recipient agrees that the Material shall not be distributed to any third
party or entity, except affiliates and subsidiaries of Recipient, without
the prior written consent of Diversa.
5. Recipient agrees that dissemination of the Material shall be limited to
those employees of Recipient with a special need to know and work with such
Material.
6. Information transferred under this Agreement, including but not limited to
the Material and all information related to the Material, shall be
"Confidential Information". Recipient shall not disclose to third parties
any Confidential Information received from Diversa
hereunder, provided, however, that Recipient shall have no objections to
Diversa with respect to the use, or disclosure to others not party to this
Agreement, of such information which:
a) prior to disclosure was known to or in the possession of Recipient as
evidenced by its written records; or
b) is or becomes publicly known during the term of this Agreement, other
than through a breach of Recipient's obligations hereunder; or
c) is received from a third party having no obligations of
confidentiality to Diversa hereunder; or
d) is developed by Recipient independently of any disclosures made under
this Agreement as evidenced by its written records; or
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e) is required by law or bona fide legal process to be disclosed,
provided that Recipient takes all reasonable steps to restrict and
maintain the confidentiality of such disclosure and provides
reasonable notice to Diversa; or
f) is authorized to be released in a written release by Diversa.
7. Recipient agrees to return all documents, samples, and other tangible items
containing or representing Confidential Information, and all copies
thereof, erase or destroy all Confidential Information contained in
computer memory or data storage apparatus, and certify in writing that it
has complied with the terms of this Paragraph 7, provided that Recipient
may, upon written notice to Diversa, retain in confidence a single copy of
that Confidential Information in the offices of Recipient's legal counsel
for legal records.
8. Recipient acknowledges that all right, title and interest in and to the
Materials belongs solely to Diversa. Recipient shall not modify the
Materials in any way, reverse engineer the Materials, use the Materials for
reproduction, offer the Materials or any derivative thereof for resale, use
the Materials in any form of human or animal testing.
9. [*****].
10. No rights under any intellectual property of Diversa or rights in any other
Material or Confidential Information that could not have been attained, but
for this Material, is granted or implied as a result of providing this
Material to Recipient.
11. None of the Material provided hereunder shall be used for any commercial
development directly or indirectly unless a license granting the same is
executed between the Parties. Recipient agrees that the Material, method of
using the Material, or any other material that could not have been made but
for the Material, shall not be sold or otherwise transferred to any third
party.
12. Diversa shall not be liable for any use of the Material or related know-how
and Recipient agrees to indemnify, defend, and hold harmless Diversa and
its officers, directors,
shareholders, employees, agents, and representatives (collectively
"Indemnitee") against all liability, demands, claims, costs, losses,
damages, recoveries, settlements, and expenses (including interest,
penalties, attorney fees, accounting fees, expert witness fees, costs, and
expenses) incurred by Indemnitee, known or unknown, contingent or
otherwise, directly or indirectly arising from or related to this Agreement
or the use of the Material or related know-how hereunder.
13. This Agreement and rights thereunder shall not be assigned or transferred,
directly or indirectly, in whole or in part by the Parties.
14. This Agreement shall be effective for [*****] from the date set forth
above.
15. The Parties may terminate this Agreement on [*****] written notice;
however, upon termination of this Agreement, nothing herein shall be
construed to release the Parties from any obligation that matured prior to
the effective date of such termination. In the event this Agreement is
terminated for any reason, the rights and obligations of Paragraphs 6, 7,
8, 9, 10, 11 and 12 shall survive termination of this Agreement.
16. The Parties represent and warrant that each has the authority to undertake
the obligations set forth in this Agreement without breaching or violating
any contractual or statutory obligation owed to another.
B-2. *Confidential Treatment Requested
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17. The provisions of this Agreement are severable and in the event any
provisions of this Agreement are determined to be held invalid or
unenforceable under any controlling body of law, such invalidity or
unenforceability shall not in any way affect the validity and
enforceability of the remaining provisions hereof.
18. This Agreement constitutes the entire agreement and understanding between
the Parties concerning the subject matter thereof. It merges with and
supersedes all previous agreements and understandings between the Parties.
19. This Agreement shall be construed in accordance with the laws of the State
of [*****] without regard to its conflict of laws principles.
20. After receipt of the executed Agreement, Diversa will arrange to provide
Recipient with the Materials.
IN WITNESS WHEREOF, the Parties have, through duly authorized representatives,
executed this Agreement, effective as of the date set forth above.
Diversa Corporation
___________________________ ________________________________________
Name Carolyn Erickson
Director, Intellectual Property
Title:____________________
B-3. *Confidential Treatment Requested
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EXHIBIT A
TO BE PROVIDED
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