Exhibit 10.1
Confidential Treatment has been
requested for portions of this exhibit. The copy filed herewith
omits the information subject to the confidentiality request.
Omissions are designated as “***”. A complete version
of this exhibit has been filed separately with the Securities and
Exchange Commission.
COMMERCIAL LICENSE
AGREEMENT
THIS AGREEMENT (“
Agreement ”) dated as of December 21, 2006 (“
Effective Date ”) is entered into by and between
SENESCO TECHNOLOGIES, INC, a Delaware corporation with principal
offices at 303 George Street, Suite 420, New Brunswick, NJ
08901 (“ STI ”) and ARBORGEN, LLC, a Delaware
limited liability company with principle offices at 180 Westvaco
Rd., Summerville, SC 29484 (“ AG ”).
RECITALS
WHEREAS, STI owns and controls
technology, know-how and United States and foreign patents and
patent applications concerning methods for controlling plant
senescence involving altering the expression of plant genes and
their cognate expressed proteins that are induced during or
coincident with the onset of senescence;
WHEREAS, AG is a forestry biotech
company in the business of research, development, and
commercialization of genetically improved trees;
WHEREAS, STI desires to grant to AG,
and AG desires to obtain from STI, a commercial license under the
STI Technology (as defined herein) on the terms and conditions set
forth in this Agreement.
NOW THEREFORE, in consideration of
the premises and the faithful performance of the mutual covenants
hereinafter set forth, the parties hereto hereby agree as
follows:
1.
DEFINITIONS
As used in this Agreement, the
following defined terms shall have the respective meanings set
forth below:
1.1
“ Affiliate ”
means any entity which controls, is controlled by, or is under
common control with another entity. An entity is deemed to be
in control of another entity (controlled entity) if such company
directly or indirectly owns 50% or more in nominal value of the
issued equity share capital of such other company, or 50% or more
of the shares entitled to vote upon the election of: (i) the
directors; (ii) persons performing functions similar to those
performed by directors; or (iii) persons otherwise having the right
to elect or appoint (a) directors having the majority vote of the
Board of Directors, or (b) other persons having the majority vote
of the highest and most authoritative directive body of such other
company. Notwithstanding the foregoing, Affiliates of AG
include, without limitation, International Paper Company,
MeadWestvaco Corporation, and Rubicon Limited.
1.2
“ Confidential
Information ” means any information received by either
Party, including all business, technical and other information,
whether disclosed in writing, orally or in any other form, tangible
or intangible, including but not limited to: information concerning
inventions (including patent applications and related documents),
discoveries, techniques, processes, designs, biological materials,
specifications, algorithms, data, finances and plans, customer
lists, business plans, contracts, marketing plans, production
plans, distribution plans, system implementations plans, business
concepts, supplier information, business procedures, business
operations; all know-how and trade secrets; and all other
unpublished copyrightable material. Confidential Information
does not include information which:
(i)
is in the public domain prior to
disclosure by the disclosing Party or later enters the public
domain through no act or omission of the receiving Party in breach
of this Agreement;
(ii)
the receiving Party possessed or
controlled prior to disclosure by the disclosing Party;
(iii)
a Third Party discloses or makes
available, without an obligation of confidentiality, to the
receiving Party;
(iv)
the receiving Party develops or
discovers independently of any Confidential Information of the
disclosing Party; or
(v)
the receiving Party is required to
disclose or make available in order to comply with a Federal,
state, local, or foreign law, but only to the extent reasonably
necessary to so comply and only upon, to the extent permitted,
providing the disclosing Party with prior notice and an opportunity
to restrict or prevent the disclosure.
1.3
“ Field ” means
***.
1.4
“ Incremental Net Sales
” means Net Sales in the Territory of a Licensed Product
determined as follows:
(i)
The ***.
(ii)
If a ***.
1.5
“ Licensed Product
” means any product containing STI Technology within the
Field.
1.6
“ Net Sales ” of
a Licensed Product means the gross sales revenues and the fair
market value of any other consideration actually received by AG or
its Affiliates and sublicensees from Third Parties arising from the
sale in the Territory of such Licensed Product to such Third
Parties, less (i) normal and customary trade, quantity and cash
discounts; rebates; sales, use, and other similar taxes; and
transportation, shipping
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insurance, handling, and packing
charges; and (ii) credits and allowances on account of returns or
retroactive price reductions in lieu of returns, whether or not
during the applicable royalty reporting period.
1.7
“ Party ” means
each of STI and AG.
1.8
“ STI Development
” means any improvement or development, whether or not
patentable or protectable as a trade secret, relating to or
deriving from the STI Technology, made by or on behalf of STI or
acquired from a Third Party, prior to and/or during the term of
this Agreement, including all patents and patent applications to be
filed relating to any such improvements or developments.
1.9
“ STI Patents ”
means (i) all U.S. and foreign patent applications owned or
controlled by or licensed to STI or its Affiliates, pending as of
the Effective Date or at any time thereafter during the term
hereof, pertaining to controlling senescence, including original
applications, provisionals, divisions, continuations, continuations
in part, extensions, PCT applications, renewals, reissues, or
reexamination applications or supplemental prosecution
certificates, including, but not limited to, all applications
listed in Appendix A; (ii) all U.S. and foreign patents that have
issued or will issue from any application identified in clause
1.11(i) hereof; and (iii) all U.S. and foreign applications that
claim priority in any way from any application or patent identified
in clause 1.11 (i) or (ii).
1.10
“ STI Technology
” means STI Patents, STI Confidential Information, STI
Developments, and STI know-how, materials, information and methods
(whether developed by or on behalf of STI or acquired from a Third
Party), including, but not limited to methods for controlling plant
senescence involving altering the expression of plant genes and
their cognate expressed proteins that are induced during or
coincident with the onset of senescence.
1.11
“ Territory ”
means worldwide.
1.12
“ Third Party ”
means all persons and entities other than STI and AG and their
respective Affiliates.
1.13
“Valid Claim” means an
issued claim of any unexpired patent included among the STI
Patents, which claim has not been held unenforceable, unpatentable
or invalid by a decision of a court or governmental body of
competent jurisdiction, unappealable or unappealed within the time
allowed for appeal, which has not been rendered unenforceable
through disclaimer or otherwise or which has not been lost through
an interference or opposition proceeding.
2.
LICENSE GRANT
2.1
STI grants to AG an exclusive
license in the Field and in the Territory to practice and use the
STI Technology and to develop, make, have made, use, sell, offer to
sell, and import
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Licensed Products.
2.2
AG has the right to grant
sublicenses hereunder, provided , however , that STI
receives a copy of all sublicenses (subject to redaction for any
confidential and proprietary information), and (b) that the rights
of any sublicensee are no greater than those granted to AG under
this Agreement. AG shall not receive from sublicensees
anything in lieu of cash payments in consideration for any
sublicense under this Agreement without the prior written consent
of STI, which consent shall not be withheld, delayed, or
conditioned unreasonably.
2.3
The Parties acknowledge and agree
(a) that the property licensed hereunder to AG constitutes
“intellectual property” as defined in Section 101(56)
of the U.S. Bankruptcy Code, and (b) that this Agreement is
governed by Section 365(n) of the U.S. Bankruptcy Code in the event
that STI commences as a case under same.
2.4
Effective with the Effective Date of
this Agreement, AG covenants to STI that AG will not sell any
product in the Field developed or produced using a process that
controls cell death excluding cell death directed to cell
differentiation by modifying membrane integrity, provided, however,
(I) that the foregoing covenant shall not apply in any country to
the extent that no Valid Claim covers any Licensed Product that
materially competes with such product in the Field, and (II) that
AG may continue to conduct research and development on, and may
commercialize, any product under development by or on behalf of AG
as of such effective date..
3.
TERM
The term of this Agreement
shall commence as of the Effective Date, and shall expire upon the
expiration of the last to expire of the STI Patents, unless earlier
terminated pursuant to Section 9 hereof or unless extended by
mutual written agreement of the Parties. Upon the expiration
of the term hereof, the license granted to AG by Section 2.1 hereof
shall be irrevocable and fully paid up.
4.
PATENTS, PATENT APPLICATIONS AND
PATENT ENFORCEMENT
4.1
AG acknowledges that all the STI
Technology is and shall remain the property of STI, and except as
provided herein, all right, title and interest in the STI
Technology is and shall remain with STI.
4.2
STI shall retain the sole right to
prosecute and maintain any and all patents and patent applications
relating to STI Technology in its sole and absolute
discretion. If STI decides not to file or to continue to
prosecute any patent application or to continue to maintain any
patent on any STI Technology in any of the United States, Canada,
Australia, New Zealand, Argentina, Brazil, Chile, China, Japan, and
European Union, then STI must notify AG of the decision at least
sixty (60) days prior to any applicable patent application or
patent deadline, and AG thereafter shall have the right to file or
to continue to prosecute and maintain, at AG’s expense, and
in AG’s name, any such patent
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application or patent and to
practice, worldwide, without any compensation to STI, any such
patent application or patent.
4.3
If either Party learns at any time
of any infringement or misappropriation or threatened infringement
or misappropriation in the Field of the STI Technology, that Party
will give written notice of that infringement or misappropriation
to the other Party. Within sixty (60) days from the other
Party’s receipt of that notice, either Party will be at
liberty to decline, by written notice to the other Party, to
institute or join in instituting any proceedings in respect of that
infringement or misappropriation. If either Party so
declines, the other Party can institute such proceedings in its
name or in the name of the Party so declining and will be entitled
to retain the whole of any damages recovered as a result of the
proceedings, but only upon previously and properly indemnifying the
Party so declining against all costs, damages, and expenses in
respect of the proceedings. If neither Party so declines
within such sixty (60) days, then the Parties, if either Party so
requires, forthwith will join in instituting and will prosecute in
good faith and diligently the proceedings, and all costs and
expenses thereby incurred and all damages thereby recovered will be
shared equally by the Parties. For any infringement or
misappropriation or threatened infringement or misappropriation
outside the Field, STI shall have the sole and absolute discretion
to institute and pursue any proceeding in respect of such
infringement or misappropriation outside the Field, shall have
complete control of any such proceeding, and shall retain 100% of
any monies received in such proceeding, including all damage awards
and settlement payments. Should STI and AG agree to jointly
institute proceedings, they will determine at that time the sharing
of expense and sharing of any award or judgment.
4.4
STI will defend, at STI’s
cost, any action or proceeding instituted for the revocation of any
STI Patent otherwise than by way of counterclaim in an action for
infringement of the STI Patent.
5.
CONSIDERATION
5.1
AG shall make the following payments
to STI:
(a)
$*** by ***;
(b)
$*** by ***; and
(c)
$*** by ***.
5.2
(a) AG shall pay, and shall cause *** to pay, to STI
*** equal to *** of *** of ***. In the event that AG *** a
*** to *** and *** does not *** the product to ***, AG will pay ***
on ***.
(b) For each ***, AG shall pay to STI *** on the ***
in *** so long as a *** such *** such ***. For each ***, AG
shall pay to STI, for *** from the date of this Agreement, the ***
on the *** in each *** in which *** such ***.
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(c) No multiple running royalties shall be payable
hereunder because any Licensed Product, the making, having made,
using, offering for sale, importation, or sale of which is covered
by more than one (1) Valid Claim. Only one multiple running
royalty shall be payable hereunder on the sale of an individual
unit of Licensed Product.
5.3
Commencing with *** of AG *** during
which AG ***, and continuing thereafter for the next ***, AG shall
pay to STI pursuant to Section 5.2 hereof a ***.
5.4
AG shall be entitled to credit any
amount paid to STI pursuant to Section 5.1 hereof against any
royalties or other amounts otherwise due and payable to STI
pursuant to Section 5.3 hereof. AG shall be entitled to
credit any amount paid or deemed to be paid to STI pursuant to
Section 5.3 hereof against any royalties otherwise due and payable
to STI pursuant to Section 5.2 hereof.
5.5
Any tax required to be withheld by
AG under the laws of any country for the account of STI shall be
paid by AG for and on behalf of STI to the appropriate tax
authority in such country, and AG shall furnish STI with reasonable
proof of payment of such tax. Any such tax required to be
withheld for the account of STI shall be an expense of and shall be
borne solely by STI.
5.6
AG shall pay, and shall cause its
Affiliates and sublicensees to pay, to STI all amounts due and
payable under Section 5 hereof in U.S. Dollars.
Notwithstanding anything else to the contrary, if, at any time,
legal restrictions prevent the prompt remittance of part of or all
of the royalties due and payable with respect to a country where
the sale of Licensed Products gives rise to the obligation of AG
and its Affiliates and sublicensees to pay royalties thereon in
accordance with Section 5 hereof, AG and its Affiliates and
sublicensees shall have the right to pay the royalties by
depositing the amount thereof in local currency to an account in
STI’s name in a bank or depository in such
country.
6.
REPORTING &
RECORDKEEPING.
6.1
AG shall, and shall cause its
Affiliates and sublicensees to, keep and maintain accurate records
in sufficient detail to enable the royalty due and payable under
Section 5 hereof to be determined. Commencing with the first
fiscal quarter of AG during which the sale of a Licensed Product
gives rise to the obligatio
