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Exhibit 10.47
INTELLECTUAL PROPERTY RIGHTS LICENSE
THIS LICENSE AGREEMENT is made as of this 3
rd 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
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