INTELLECTUAL PROPERTY RIGHTS LICENSEIP Intellectual Property License Assignment Agreement |
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Exhibit 10.47
INTELLECTUAL PROPERTY RIGHTS LICENSE
THIS LICENSE AGREEMENT is made as of this 3rd day of December, 2002 by and between Syngenta Participations AG, a corporation organized under the laws of Switzerland
(“SPARTAG”), and Diversa Corporation, a Delaware corporation (“DIVERSA”) and will be effective as of the closing of the transactions contemplated by the Transaction Agreement (as defined below) (the “License
Effective Date”). Each of SPARTAG and DIVERSA are referred to herein as a “Party” and together as the “Parties.”
W I T N E S S E T H:
WHEREAS, SPARTAG, Torrey Mesa
Research Institute (“TMRI Corp.”, and together with SPARTAG, “the Syngenta Parties”) and DIVERSA have entered into a Transaction Agreement (the “Transaction Agreement”) dated as of December
3, 2002 pursuant to which the Syngenta Parties have agreed to sell and transfer certain assets and properties owned, held or used in the conduct of TMRI (as defined in the Transaction Agreement) to DIVERSA, and DIVERSA has agreed to purchase these
assets and properties from the Syngenta Parties; and
WHEREAS, the Syngenta Parties and DIVERSA have agreed to
enter into several other Transaction Documents (as defined in the Transaction Agreement) that will become effective at the closing under the Transaction Agreement, including, without limitation, the Collaboration Agreement (as defined in the
Transaction Agreement) and this Intellectual Property License Agreement providing for the grant and delivery by SPARTAG to DIVERSA of licenses to certain TMRI Intellectual Property Rights;
NOW THEREFORE, in consideration of the mutual covenants set forth herein and other good and valuable consideration, SPARTAG and DIVERSA, intending to be legally bound,
hereby agree as follows:
1. Definitions
In addition to the other terms defined below, the following terms used in this Agreement shall have the following meanings:
“Affiliate” has the meaning set forth in Section 1.1 of the Collaboration Agreement.
“Control”, “Controls”, or “Controlled” has the meaning set forth in Section 1.6 of the Collaboration
Agreement.
“Intellectual Property Right” has the meaning set forth in Section 1.01 of
the Transaction Agreement.
“Patent” has the meaning set forth in Section 1.01 of the Transaction
Agreement.
“Person” has the meaning set forth in Section 1.01 of the Transaction Agreement.
“Plant” has the meaning set forth in Section 1.25 of the Collaboration Agreement.
1.
“Plant Health Technology” means the tools, technologies and methods which are not publicly available and
are proprietary to or Controlled by Syngenta or its Affiliates immediately prior to the closing of the transactions under the Transaction Agreement, as practiced in the fungal program conducted by the pathogen research team of TMRI Corp., and which
are claimed or disclosed within the scope of the TMRI Intellectual Property Rights listed in Schedule 3.10(a)-1 or Schedule 3.10(a)-2 of the Transaction Agreement.
“Platform Technology” has the meaning set forth in Section 1.27 of the Collaboration Agreement.
“Syngenta Exclusive Field” has the meaning set forth in Section 1.46 of the Collaboration Agreement.
“Third Party” has the meaning set forth in Section 1.50 of the Collaboration Agreement.
“TMRI Intellectual Property Rights” has the meaning set forth in Section 1.01 of the Transaction Agreement; provided that, for purposes of this
Agreement, the term “TMRI Intellectual Property Rights” shall not include any trademark, service mark, trade name or domain name.
2. Grants of Rights by SPARTAG to DIVERSA
2.1. Platform
Technology. Subject to Section 2.3 below, SPARTAG hereby grants and delivers to DIVERSA an exclusive, perpetual, irrevocable, royalty-free license in and to TMRI Intellectual Property Rights claimed, disclosed, covered or
included in the Platform Technology, including, without limitation, the Patents listed on Schedules 3.10(a)-1 and 3.10(a)-2 of the Transaction Agreement which relate to the Platform Technology, in each case solely for uses outside the Syngenta
Exclusive Field, which license shall be effective as of the License Effective Date.
2.2 Plant
Health Technology. Subject to DIVERSA’s hiring of at least two senior employees from TMRI Corp.’s pathogen research team and subject to Section 2.3 below, SPARTAG hereby grants and delivers to DIVERSA an
exclusive, perpetual, irrevocable, royalty-free license in and to TMRI Intellectual Property Rights claimed, disclosed, covered or included in the Plant Health Technology, including, without limitation, the Patents listed on Schedules 3.10(a)-1 and
3.10(a)-2 of the Transaction Agreement which relate to the Plant Health Technology, in each case solely for uses outside the Syngenta Exclusive Field, which license shall be effective as of the License Effective Date. In this event, SPARTAG will
make reasonable attempts to extract specific data sets with reference to antifungal activity from the TMRI Corp. genomics database for inclusion in the license granted pursuant to this Section 2.2 for use by DIVERSA outside the Syngenta Exclusive
Field, including, without limitation, use by DIVERSA in the invention of human anti-infective pharmaceutical drug candidates and drugs. In addition, upon the grant of the license under this Section 2.2, SPARTAG will deliver to DIVERSA all fungal
strains and other tangible materials included in the Plant Health Technology.
2.3 Terms of
Licenses. The licenses set forth in Sections 2.1 and 2.2 above shall be exclusive for all applications outside the Syngenta Exclusive Field, including during and after the term of the Collaboration Agreement, and such
licenses will survive termination of the Collaboration Agreement.
2.
2.4 Sublicenses. DIVERSA shall have the
right to grant sub-licenses under the licenses granted by SPARTAG to DIVERSA in Sections 2.1 and 2.2 only to (a) any spin-out companies of DIVERSA, and/or (b) to any Affiliate of DIVERSA or Third Party to whom DIVERSA assigns, licenses or other
transfers all or substantially all of any business of DIVERSA which uses the TMRI Intellectual Property Rights licensed pursuant to this Agreement, in either such case for the same purposes and on the same terms as set forth in Sections 2.1 and 2.2
and provided that (i) any such sublicensee to whom a sublicense is granted agrees to be bound by the terms and conditions of this Agreement and (ii) DIVERSA will be responsible for the observance by all such sublicensees of all applicable provisions
of this Agreement, and will use its reasonable good faith efforts to cause all of such sublicensees to observe the covenants in this Agreement.
3. Warranties and Representations
In addition to the representations and
warranties regarding the TMRI Intellectual Property Rights included in the Transaction Agreement, SPARTAG represents and warrants that (a) it has the right to grant the licenses granted and deliver the materials specified in Section 2 of this
Agreement, (b) it has not assigned, licensed or otherwise granted to any Person, except as expressly provided in this Agreement or the Transaction Agreement, any right or interest in any TMRI Intellectual Property Right, (c) it has not, and will
not, grant any right to any Person which would conflict with the licenses granted to DIVERSA under this Agreement, (d) it has maintained and will maintain and keep in full force and effect all agreements (including license agreements) and filings
(including Patent filings) necessary to perform its obligations under this Agreement, and (e) subject to any exclusions disclosed on Schedules 3.09(c), 3.10(a)-1, 3.10(a)-2, 3.10(a)-4, 3.10(a)-5, 3.10(c), and Schedule 3.10(d) of the Transaction
Agreement, to its knowledge as of the License Effective Date, there is no Third Party intellectual property which DIVERSA would be required to license or acquire in order to practice the TMRI Intellectual Property Rights.
4. Prosecution, Maintenance and Defense of Intellectual Property
4.1 By SPARTAG. SPARTAG shall, at its sole discretion and expense, prosecute, maintain and defend or have prosecuted, maintained
and defended the TMRI Intellectual Property Rights; provided, however, that SPARTAG shall use commercially reasonable efforts to prosecute, maintain and defend or have prosecuted, maintained and defended the TMRI Intellectual Property Rights
pursuant to this Section 4.1 in a manner so that, for the duration of the TMRI Intellectual Property Rights, the scope of the TMRI Intellectual Property Rights remains comparable to the scope of the TMRI Intellectual Property Rights as they exist as
of the License Effective Date. SPARTAG agrees to keep DIVERSA reasonably informed of prosecution, maintenance and defense of the TMRI Intellectual Property, including, without limitation, providing notice and information regarding substantive
amendments to claims, response to final rejections and notices of allowance, filing decisions in the United States as well as foreign patent offices, oppositions, revocations, re-examination or other substantive prosecution matters with respect to
the TMRI Intellectual Property Rights.
4.2. DIVERSA Rights. Subject to
SPARTAG’s obligations under Section 4.1, if SPARTAG elects not to continue to prosecute any patent applications or to maintain any patents within the TMRI Intellectual Property Rights licensed to DIVERSA under Section 2 of this
3.
Agreement in any country, on a country-by-country basis, SPARTAG shall promptly notify DIVERSA in
writing and DIVERSA shall have the right, but not the obligation, to assume the responsibility for the prosecution of any such patent applications and maintenance of any such patents at DIVERSA’s expense. If, following such SPARTAG election,
DIVERSA elects to continue to prosecute any such patent applications or to maintain any such patents, SPARTAG shall assign such patent applications and patents to DIVERSA, and shall execute all documents necessary to effect such assignment, and
DIVERSA shall grant back to SPARTAG and its Affiliates the licenses specified to be granted by Diversa to SPARTAG under the Collaboration Agreement on the terms specified therein and a non-exclusive, royalty-bearing license for the Syngenta
Exclusive Field under any other applicable patent application or patent at a royalty rate to be negotiated by the Parties.
4.3 Enforcement. Enforcement of any of the TMRI Intellectual Property Rights against any actual or threatened infringement shall be subject to the terms set forth in Section 8.7 of the
Collaboration Agreement, which is incorporated herein by reference.
4.4 Third Party
Infringement. The Parties shall promptly notify one another in writing of any allegation by a Third Party that the exercise of the rights granted t
