**CONFIDENTIAL TREATMENT REQUESTED BY DELTA AND PINE LAND
COMPANY**
RESTATED VIP3A GENE
LICENSE AGREEMENT
effective as of the 24th day of August 2004
between
SYNGENTA CROP PROTECTION AG
and
DELTA AND PINE LAND COMPANY
<PAGE>
TABLE OF CONTENTS
<TABLE>
<S>
<C>
SECTION 1 --
BACKGROUND............................................................................................1
SECTION 2 --
INTERPRETATION........................................................................................1
2.1
DEFINITIONS.............................................................................1
2.2
STATUTORY
REFERENCES...................................................................12
2.3
DEFINED
TERMS..........................................................................12
SECTION 3 --
LICENSES.............................................................................................13
3.1
LICENSE TO VIP3A
GENE..................................................................13
3.2
LICENSE TO PRODUCE AND SELL LICENSED COMMERCIAL
SEED...................................13
3.3
LICENSE TO MULTIPLY LICENSED COMMERCIAL
SEED...........................................13
3.4
EX-U.S.
SUBLICENSES....................................................................13
3.5
RIGHTS RETAINED BY
SYNGENTA............................................................14
3.6
COMBINED GENE COTTON
SEED..............................................................17
3.7
CONDITIONS ON
LICENSES.................................................................19
3.8
GENE
TRADEMARK.........................................................................20
3.9
THIRD
PARTY VIOLATIONS OR INVALIDITY OF RESTRICTIONS ON
SUBLICENSE.............................................................................21
SECTION 4 -- COMMERCIAL DEVELOPMENT
ACTIVITIES OF THE
PARTIES.....................................................21
4.1
COMMERCIAL DEVELOPMENT
PLAN............................................................21
4.2
CONSULTATION...........................................................................22
4.3
GENE PROTECTION AND REGULATORY
ACTIVITIES..............................................22
4.4
SEED DEVELOPMENT AND COMMERCIALIZATION
RESPONSIBILITIES................................29
4.5
LICENSE MANAGEMENT
COMMITTEE...........................................................32
SECTION 5 -- OWNERSHIP OF
TECHNOLOGY..............................................................................37
5.1
SYNGENTA
TECHNOLOGY AND LICENSED PATENT
RIGHTS.........................................37
5.2
D&PL
TECHNOLOGY........................................................................37
5.3
SAFETY, TOXICOLOGY AND EFFICACY
DATA...................................................37
5.4
USE OF
DATA............................................................................38
SECTION 6 -- TECHNOLOGY FEES AND
ROYALTY..........................................................................38
6.1
TECHNOLOGY
FEE.........................................................................38
6.2
COMPENSATION TO SYNGENTA FOR LICENSE TO THE
GENE.......................................42
6.3
ROYALTY
PERIOD.........................................................................42
SECTION 7 -- BUSINESS
RECORDS/PAYMENTS............................................................................44
7.1
D&PL BUSINESS
RECORDS..................................................................44
7.2
D&PL REPORTS AND
PAYMENTS..............................................................44
7.3
SYNGENTA BUSINESS
RECORDS..............................................................45
7.4
SYNGENTA REPORTS AND
PAYMENTS..........................................................45
7.5
PAYMENT
ADDRESS........................................................................46
7.6
PAYMENTS...............................................................................47
7.7
INTEREST ON OUTSTANDING
BALANCES.......................................................48
7.8
SYNGENTA PATENT
RECORDS................................................................48
<PAGE>
SECTION 8 --
CONFIDENTIALITY......................................................................................48
8.1
NON-DISCLOSURE OF CONFIDENTIAL
INFORMATION.............................................48
8.2
PERIOD OF
CONFIDENTIALITY..............................................................48
8.3
USES OF CONFIDENTIAL
INFORMATION.......................................................49
SECTION 9 -- FORCE
MAJEURE........................................................................................50
9.1
FORCE
MAJEURE..........................................................................50
SECTION 10 -- TERM AND
TERMINATION................................................................................51
10.1
TERM
OF
LICENSES.......................................................................51
10.2
TERMINATION............................................................................51
10.3
BREACH OF
OBLIGATIONS..................................................................51
10.4
DEFAULT ON
PAYMENT.....................................................................51
10.5
EFFECT OF
TERMINATION..................................................................51
10.6
SURVIVAL OF
COVENANTS..................................................................52
SECTION 11 -- WARRANTIES and WARRANTY
LIMITATIONS.................................................................52
11.1
SYNGENTA
WARRANTIES....................................................................52
11.2
D&PL
WARRANTIES........................................................................53
11.3
MUTUAL
WARRANTIES......................................................................54
11.4 NO
OTHER
WARRANTIES....................................................................54
11.5
EXCLUSIVE
REMEDY.......................................................................55
SECTION 12 -- PATENT
INFRINGEMENT.................................................................................55
SECTION 13 -- CLAIMS BY VENDEES FOR FAILURE
OF GENE
PERFORMANCE...................................................55
SECTION 14 --
GENERAL.............................................................................................55
14.1
ASSIGNMENT OF D&PL'S RIGHTS AND
OBLIGATIONS............................................55
14.2
ASSIGNMENT OF SYNGENTA'S RIGHTS AND
OBLIGATIONS........................................56
14.3
RELATION OF
PARTIES....................................................................57
14.4
INTEGRATION OF
CONTRACT................................................................57
14.5
WAIVERS AND
AMENDMENTS.................................................................57
14.6
HEADINGS...............................................................................58
14.7
REFERENCES TO SECTIONS, SUBSECTIONS AND
EXHIBITS.......................................58
14.8
PARTIAL
INVALIDITY.....................................................................58
14.9
GOVERNING CONTRACT
LAW.................................................................58
14.10
GOVERNING
PATENT
LAW...................................................................59
14.11
NOTICES................................................................................59
14.12 DISPUTE
RESOLUTION.....................................................................59
14.13
INCORPORATION OF
EXHIBITS..............................................................61
</TABLE>
<PAGE>
**CONFIDENTIAL TREATMENT REQUESTED BY DELTA
AND PINE LAND COMPANY**
Exhibits
Exhibit A - *****
Exhibit B - VIP3A Gene Trademark License
Agreement
Exhibit C - *****
Exhibit D - Agronomic Criteria
Exhibit E - Seed Purity Standards
Exhibit F - Pricing Regions in the United
States
Exhibit G - *****
Exhibit H - *****
Exhibit I - *****
Exhibit J - *****
Exhibit K - *****
Exhibit L - *****
Exhibit M - *****
<PAGE>
59
RESTATED
VIP3A GENE LICENSE AGREEMENT
----------------------------
THIS RESTATED
VIP3A GENE LICENSE AGREEMENT ("LICENSE AGREEMENT") effective
made as of the 24th day of August
2004 (the "EFFECTIVE DATE") by and between
SYNGENTA CROP PROTECTION AG, having a place
of business at Schwarzwaldallee 215,
CH - 4058, Basel, Switzerland, and DELTA AND PINE LAND COMPANY,
having a place
of business at One Cotton Row, Scott,
Mississippi 38772.
SECTION 1 -- BACKGROUND
--------------------------
1.1 SYNGENTA has
developed the VIP3A GENE which is useful in the production
of genetically-modified cotton plants exhibiting INSECT RESISTANCE and also
possesses certain know-how and germplasm
relating to such cotton plants.
1.2 SYNGENTA and
D&PL desire to enter into a license agreement under which
D&PL would be granted a worldwide license under certain patents to which
SYNGENTA has rights to produce and sell
LICENSED COMMERCIAL
SEED containing the
VIP3A GENE and to sublicense cotton farmers
the right to use LICENSED COMMERCIAL
SEED exhibiting INSECT RESISTANCE to
produce a single commercial cotton crop.
SECTION 2 -- INTERPRETATION
-----------------------------
2.1 DEFINITIONS.
In this LICENSE
AGREEMENT,
unless the context
otherwise
-----------
requires:
2.1.1 The term
"AFFILIATE" means any corporation, firm, limited liability
company, partnership or other entity that
directly or indirectly CONTROLS or is
CONTROLLED by or is under common CONTROL
with another corporation, firm, limited
liability company, partnership or other entity; provided that, any other
provisions hereof notwithstanding, (a) a company organized to operate
a cotton
seed business in a country where DELTA AND PINE LAND COMPANY
is prohibited by
local laws or regulations from owning fifty percent (50%) or
more of the voting
stock or equity interests of such company, DELTA AND PINE LAND COMPANY
owns,
directly or indirectly, the maximum amount of voting stock it is
permitted to
own in such company, under local laws and regulations, shall be considered an
AFFILIATE of DELTA AND PINE LAND COMPANY
and [Text In Item 1 of Exhibit K]
<PAGE>
2.1.2 The term
"AGRONOMIC
CRITERIA" means the standard for the
agronomic
and commercial acceptability as to yield,
fiber quality and
disease resistance
which must be satisfied by cultivars of LICENSED COMMERCIAL SEED offered for
COMMERCIAL SALE as set forth in Exhibit D
to this LICENSE AGREEMENT, as the same
may be amended in accordance with
Subsection 4.4(a) of this LICENSE AGREEMENT.
2.1.3 [Text In
Exhibit I]
2.1.4 The term
"COMBINED GENE COTTON SEED" means a LICENSED COMMERCIAL SEED
which contains one or more NON-SYNGENTA
GENE(S).
2.1.5
The term "COMMERCIAL DEVELOPMENT" means the evaluation of a
particular VIP3A GENE EVENT (either alone or in combination with any other
particular SYNGENTA GENE(S) and/or NON-SYNGENTA GENE(S)), (a) by D&PL in
DELTAPINE CULTIVARS; (b) by D&PL'S sublicensees in DELTAPINE
CULTIVARS or in
SUBLICENSEE CULTIVARS; (c) if permitted under this
LICENSE AGREEMENT, by or for
SYNGENTA in cultivars other than DELTAPINE
CULTIVARS; or (d) if
permitted under
this LICENSE AGREEMENT, by a third party licensed by SYNGENTA in such
third
party's cultivars, pursuant to the COMMERCIAL DEVELOPMENT PLAN after a
determination is made in accordance with Subsection 4.4(b) of this LICENSE
AGREEMENT that the particular VIP3A GENE EVENT has exhibited the
criteria for
COMMERCIAL INSECT RESISTANCE.
2.1.6 The term
"COMMERCIAL DEVELOPMENT PLAN" means the plan for development
of LICENSED COMMERCIAL SEED to be adopted in
accordance with Subsection 4.4(a)
of this LICENSE AGREEMENT as the same may be amended from time to time in
accordance with Section 4 of this LICENSE
AGREEMENT.
2.1.7 The term
"COMMERCIAL INSECT RESISTANCE" means LEPIDOPTERAN RESISTANCE
meeting the criteria for LEPIDOPTERAN RESISTANCE in LICENSED
COMMERCIAL
SEED
sold for planting in THE TERRITORY or in
any particular part of THE TERRITORY as
set forth in the COMMERCIAL DEVELOPMENT PLAN adopted in accordance with
Subsection 4.4(a) of this LICENSE
AGREEMENT.
2.1.8 The term
"COMMERCIAL SALE" with respect to a GENE means sale or other
transfer for value of cotton seed containing such GENE for use by LICENSED
GROWERS in producing a single commercial
commodity cotton crop
(other than sale
or other transfer for testing or increase
on behalf of the transferor).
<PAGE>
2.1.9 [Text In
Exhibit J]
2.1.10 The term
"COMPETITIVE
TECHNOLOGY FEE ADJUSTMENTS" means the amounts
established in accordance with Section 6
that D&PL may provide as adjustments to
the TECHNOLOGY FEES to meet competitive conditions in the marketplace in a
particular PRICING REGION.
2.1.11 The term
"CONTROL," "CONTROLS,"
OR "CONTROLLED" means
with respect
to any corporation, the ownership of fifty percent
(50%) or more of the voting
stock of a corporation and with respect to
any other legal entity, ownership of
fifty percent (50%) or more of total equity
interests; provided, however, that a
person, partnership, corporation or other legal entity that
controls another
person, partnership, corporation or other legal entity shall be
considered as
having control over every person,
partnership, corporation or other legal entity
that such controlled person, partnership, corporation or other legal entity
controls.
2.1.12 The term
"D&PL" means, collectively, DELTA AND PINE LAND COMPANY and
its AFFILIATES, provided that if a notice
is required to be given by or to D&PL,
or a document is to be executed by D&PL
under Section 14.5,
the term shall mean
DELTA AND PINE LAND COMPANY.
2.1.13 [Text In
Exhibit J]
2.1.14 The term
"D&PL TECHNOLOGY"
means any information,
data, know-how,
technology, and germplasm that D&PL now owns or licenses (other than from
SYNGENTA) or hereafter develops,
produces, makes,
licenses in or obtains (other
than from SYNGENTA), relating to the breeding and
development
of commercial
varieties or hybrids of LICENSED
COMMERCIAL
SEED or other
varieties or hybrids
of cotton. D&PL TECHNOLOGY shall not include information, data, know-how,
technology, or germplasm that has become part of the public
domain through no
fault of SYNGENTA or which has been
provided to SYNGENTA, as evidenced by
SYNGENTA'S written records, by a third party having no obligation of
confidentiality to D&PL with respect
thereto.
2.1.15 The term
"DATE OF APPROVAL FOR
COMMERCIAL
SALE" with respect to
a
particular VIP3A GENE EVENT means the date on
which D&PL or its
sublicensee(s)
commences COMMERCIAL SALE by D&PL (or
its sublicensee(s) of LICENSED COMMERCIAL
SEED containing that VIP3A GENE EVENT in a
particular country in THE TERRITORY
<PAGE>
**CONFIDENTIAL TREATMENT REQUESTED BY DELTA
AND PINE LAND COMPANY**
or SYNGENTA or its licensee(s) commences COMMERCIAL SALE of
LICENSED COMMERCIAL
SEED in a particular country pursuant to
Subsection 4.3(k).
2.1.16 The term
"DATE OF GOVERNMENT
APPROVAL" with respect
to any country
in THE TERRITORY with respect to a VIP3A GENE EVENT means the date on which
GOVERNMENT APPROVAL of such VIP3A GENE
EVENT has been obtained in that country.
2.1.17 The term
"DEADLOCK MATTER"
shall have the meaning
ascribed to that
term in Section 4.5(d)(v).
2.1.18 The term
"DELTA AND PINE LAND
COMPANY" means Delta and Pine Land
Company, a company incorporated in the
State of Delaware, USA, having offices at
One Cotton Row, Scott, Mississippi 38772,
USA.
2.1.19 The term
"DELTAPINE VIP3A CULTIVAR" means a DELTAPINE CULTIVAR which
contains the VIP3A GENE.
2.1.20 The term
"DELTAPINE
CULTIVAR" means a cultivar of cotton
produced
from germplasm which D&PL has the right to use for plant-breeding purposes
and/or which D&PL otherwise has the
right to use for COMMERCIAL SALE.
2.1.21 The term
"DISPUTE" shall have the meaning
ascribed to the term
in
Section 14.12.
2.1.22 [Text In
Exhibit I]
2.1.23 The term
"EFFECTIVE DATE" means the date first above written.
2.1.24 The term
"EXECUTIVE
MANAGEMENT
COMMITTEE"
shall have the
meaning
ascribed to that term in Section
4.5(d)(v).
2.1.25 The term
"EXPIRATION," with respect to any patent, means the earlier
of the date upon which such patent expires
or upon which an applicable claim is
cancelled, or declared invalid or permanently unenforceable by any court or
administrative agency of competent
jurisdiction from
which no appeal has or can
be taken.
2.1.26
The term "FTE RATE" means cost of a full-time equivalent
person-year, based on a total of one thousand
eight hundred forty (1,840) hours
of work per year by a person appropriately qualified for the tasks to be
completed, and who holds a Ph.D. or Masters of Science (or is otherwise
appropriately trained) in an appropriate discipline, which rate shall equal
US ***** in base year 2004, and which rate shall be adjusted annually
<PAGE>
beginning January 1, 2005, by any percentage
change in the Consumer Price Index
of All Urban Consumers (CPI-U) published by the United
States Department of
Labor.
2.1.27 The term
"GENE" means a DNA
sequence contained in the genome of a
sexually viable cotton plant.
2.1.28 The term
"GENE EQUIVALENCY
STANDARDS" means
standards,
protocols,
and processes for verification of
insecticide protein expression in cultivars of
LICENSED COMMERCIAL SEED proposed for COMMERCIAL SALE in accordance with
standards set forth in the COMMERCIAL DEVELOPMENT PLAN adopted in accordance
with Subsection 4.4(a) of this LICENSE
AGREEMENT.
2.1.29 The term
"GOVERNMENT
APPROVAL" with respect to a VIP3A GENE
EVENT
(or other GENE event) in a particular
country means that official clearances or
written approvals for COMMERCIAL SALE of
seed to produce genetically-transformed
cotton plants containing that VIP3A GENE EVENT (or other
GENE event) have been
obtained from all government agencies in that country
which, as of that date,
are required for the import, testing,
development,
production, use, and sale of
such plants or seed produced therefrom under applicable laws as required for
D&PL (or its sublicensees) activities under this LICENSE
AGREEMENT,
provided
that, to constitute GOVERNMENT APPROVAL,
such clearances or
approvals shall not
place materially greater regulatory restrictions or economic burdens that
adversely affect the COMMERCIAL SALE or use
of the subject VIP3A GENE EVENT than
on any other LEPIDOPTERAN-ACTIVE GENE available for COMMERCIAL SALE in that
country (unless this requirement is waived by notice from D&PL
to SYNGENTA),
provided, further, however, that nothing in
this LICENSE AGREEMENT shall require
SYNGENTA to obtain approval from any agency
with respect to the issuance of seed
certificates or phytosanitary certificates or certificates of plant variety
protection under the U. S. Plant Variety Protection Act or any other laws
relating to plant variety protection, which approvals, when appropriate or
required, shall be the responsibility of
D&PL (or its sublicensee).
2.1.30
The term "HERBICIDE TOLERANCE GENE" means a GENE which does not
occur naturally in cotton that causes
cotton plants not to sustain economically
significant damage when exposed to a
glyphosate-based herbicide.
2.1.31 The term
"INSECT RESISTANCE" or
"INSECT RESISTANCE TRAIT" means the
property of cotton plants (a) to exhibit LEPIDOPTERAN RESISTANCE due to the
presence of LEPIDOPTERAN-ACTIVE GENE(S) and/or (b) to be toxic to
insect pests
<PAGE>
of cotton other than LEPIDOPTERAN INSECTS due to the presence of
NON-LEPIDOPTERAN ACTIVE GENE(S).
2.1.32 [Text In
Exhibit J]
2.1.33 [Text In
Exhibit J]
2.1.34 The term
"LEPIDOPTERAN-ACTIVE
GENE" means a GENE
containing one or
more sequences encoding one or more toxins which
do(es) not occur
naturally in
cotton, that provides LEPIDOPTERAN
RESISTANCE.
2.1.35 The term
"LEPIDOPTERAN
INSECTS" means a group
of cotton
bollworms
including: Helicoverpa zea (Cotton Bollworm), Heliothis virescens (Tobacco
Budworm), and Pectinophora gossypiella
(Pink Bollworm).
2.1.36 The term
"LEPIDOPTERAN
RESISTANCE"
means the property of cotton
plants to be toxic to LEPIDOPTERAN INSECTS
due to the presence of a gene(s) that
encodes a toxin which does not occur
naturally in cotton.
2.1.37 The term
"LICENSE ACQUISITION
AGREEMENT" means the Restated License
Acquisition Agreement dated August 24,
2004, between SYNGENTA CROP PROTECTION AG
and DELTA AND PINE LAND COMPANY
whereby D&PL
acquired the right to
licenses to
certain GENES, including the right to the LICENSES to the VIP3A GENE more
particularly described herein.
2.1.38
The term "LICENSE MANAGEMENT COMMITTEE" means the committee
established by D&PL and SYNGENTA pursuant to Subsection 4.5 of this LICENSE
AGREEMENT.
2.1.39 The term
"LICENSE PURCHASE
PRICE" means all amounts payable by D&PL
to SYNGENTA under the LICENSE ACQUISITION AGREEMENT and allocated to the
acquisition of the LICENSES set forth in
this LICENSE AGREEMENT.
2.1.40
The term "LICENSED COMMERCIAL SEED" means cotton seed which
incorporates the VIP3A GENE.
2.1.41 The term
"LICENSED GROWER(S)"
means any person or
entity which has
been sublicensed by D&PL or its
sublicensees
(whether through a
grower license
agreement executed by such person or entity
or by wording on container labels or
sales documents used in lieu of execution
of grower license agreement) under the
<PAGE>
LICENSED PATENT RIGHTS to use LICENSED
COMMERCIAL
SEED for production of a
single commercial cotton crop.
2.1.42 The term
"LICENSED PATENT RIGHTS" means the patents and patent
applications listed in Exhibit A which are
owned by SYNGENTA
or licensed to
SYNGENTA (including any patent applications
and patents filed, granted or issued
pursuant to any parent, extension, confirmation, continuation, registration,
reexamination, continuation-in-part,
reissue, or divisional
thereof anywhere in
the world), and any additional such patent
rights of SYNGENTA or of others which
may be added to said Exhibit A by SYNGENTA
by written notice to
D&PL. LICENSED
PATENT RIGHTS shall include any patent rights which are acquired by
SYNGENTA
with the right to license or sublicense to D&PL during the
term of this LICENSE
AGREEMENT which, in the absence of the
LICENSES, potentially
would be infringed
by D&PL'S performance hereunder or by D&PL'S making,
using or selling
LICENSED
COMMERCIAL SEED or other activities hereunder. SYNGENTA shall periodically
update Exhibit A with any such patent
rights which have been newly acquired by
SYNGENTA. It is the intention of the PARTIES
that D&PL be
licensed under all
patents and applications owned or controlled by SYNGENTA (with the right to
grant rights to D&PL) that D&PL
requires for performance under this LICENSE
AGREEMENT. The listing of a patent or patent
application on Exhibit A shall not
be an admission by either PARTY that such patent would, in the absence of
license, be infringed. Similarly, the failure to list a patent or patent
application on Exhibit A shall not
necessarily be
determinative of whether such
patent or patent application is a LICENSED
PATENT RIGHT.
2.1.43 The term
"LICENSES" means the licenses granted to D&PL under Section
3.
2.1.44 [Text In
Item 2 of Exhibit K]
2.1.45 [Text In
Item 2 of Exhibit K]
2.1.46 [Text In
Item 2 of Exhibit K]
2.1.47 [Text In
Item 2 of Exhibit K]
2.1.48 [Text In
Item 2 of Exhibit K]
<PAGE>
**CONFIDENTIAL TREATMENT REQUESTED BY DELTA
AND PINE LAND COMPANY**
2.1.49 [Text In
Item 2 of Exhibit K]
2.1.50 The term
"NET TECHNOLOGY FEE REVENUE" means the TECHNOLOGY FEES, as
modified by COMPETITIVE TECHNOLOGY FEE
ADJUSTMENTS, collected for the license or
use of the VIP3A GENE in LICENSED
COMMERCIAL SEED, less amounts paid for (a) the
reasonable costs of grower licensing and collection of TECHNOLOGY
FEES, (b)
payments, discounts and rebates to
distributors
and retailers,
(c) payments,
discounts and rebates to growers under crop
destruct, crop replant, SEED DROP
RATE exception, refugia refund (i.e. price
adjustments or rebates
based on the
grower's choice among refugia options), trait investment, regional price
adjustment (i.e. price adjustments or
rebates targeted at encouraging growers in
specific geographical areas to use LICENSED COMMERCIAL SEED containing
VIP3A
GENES) and other grower incentive programs, and (d) advertising (e.g.,
electronic media and print) which,
as to (a) through (d),
(i) are directly and
exclusively attributable to the licensing or use of the
VIP3A GENE
(including
the HERBICIDE TOLERANCE GENE as described
in Exhibit H with which the VIP3A GENE
is stacked, except to the extent paid or reimbursed by a party other than
SYNGENTA or D&PL)*****, and (ii) have been approved by the
LICENSE MANAGEMENT
COMMITTEE in accordance with Subsection 4.4(c) hereof and (iii) have been
paid
to distributors, retailers, and/or growers (or, in the case of advertising
programs, expended) in accordance
with their terms and
conditions and in
each
case in connection with the license or use of the
VIP3A GENE and/or such other
GENE(S) in LICENSED COMMERCIAL SEED, and calculated in accordance
with U.S.
generally accepted accounting principles, consistently applied, during the
applicable period for which a ROYALTY
payment is being
determined. There
shall
be no duplication of reimbursement or payment for such
costs and expenses under
this LICENSE AGREEMENT and under any
RELATED AGREEMENT. For purposes of payments
to be made under Section 7, the amounts to
be deducted under
Subparts (a)-(d)
above to determine NET TECHNOLOGY FEE
REVENUE may be estimated based on accruals
made in good faith and in accordance with generally accepted accounting
principles consistently applied by the applicable PARTY
incurring such expense
and then trued-up on the next December 31 based on the actual
amounts paid for
such items.
2.1.51 The term
"NON-INSECT RESISTANCE GENE" means a GENE containing one or
more DNA sequences which do(es) not occur
naturally in cotton that cause(s)
cotton plants to express a trait,
other than INSECT
RESISTANCE,
not found in
cotton. NON-INSECT RESISTANCE GENES shall include but are not limited to
HERBICIDE TOLERANCE GENES.
2.1.52 The term
"NON-LEPIDOPTERAN-ACTIVE GENE" means a GENE containing
one
or more DNA sequences encoding one or more toxins, which do(es) not occur
naturally in cotton, that provide(s)
resistance to insect
pests of cotton other
than LEPIDOPTERAN INSECTS and do(es) not
qualify as a LEPIDOPTERAN-ACTIVE GENE.
2.1.53 The term
"NON-SYNGENTA
GENE" means a GENE not
licensed to D&PL
by
SYNGENTA expressing a trait not
naturally occurring in cotton or modulating
expression of a characteristic naturally
found in cotton.
2.1.54
The term "NON-VIP3A SYNGENTA LEPIDOPTERAN-ACTIVE GENE" means a
LEPIDOPTERAN-ACTIVE GENE (other than the VIP3A GENE) which
is licensed to D&PL
by SYNGENTA.
2.1.55 The term
"NON-VIP3A SYNGENTA LEPIDOPTERAN-ACTIVE GENE EVENT" means a
transformation event by which a NON-VIP3A
SYNGENTA
LEPIDOPTERAN-ACTIVE
GENE is
inserted in the genome of a sexually viable
cotton plant.
2.1.56 The
"PANEL" shall have the meaning ascribed to that term in
Section
14.12.
2.1.57 The term
"PARTIES" shall mean SYNGENTA and D&PL,
and "PARTY" shall
mean either SYNGENTA or D&PL, provided
with respect to the recipient of a notice
or execution of documents under
Subsection
14.5, "PARTY" shall mean either of
(and "PARTIES" shall mean both of) SYNGENTA
CROP PROTECTION AG and DELTA AND
PINE LAND COMPANY.
2.1.58 [Text In
Exhibit I]
2.1.59 [Text In
Exhibit I]
<PAGE>
2.1.60 The term
"PRICING REGION" means (a) in the United States of America,
each of the geographic regions described in attached
Exhibit F (which Exhibit F
may be amended by D&PL by notice to
SYNGENTA on or before
September 15 of the
calendar year before the commencement of the cotton planting season in which
such amended description of the PRICING REGIONS
in the United States of America
will take effect) and (b) outside the United States, each nation in which
LICENSED COMMERCIAL SEED is marketed by D&PL or its AFFILIATES, by D&PL'S
sublicensee(s), or if permitted under this
LICENSE AGREEMENT, by or on behalf of
SYNGENTA and/or by a third party licensed
by SYNGENTA.
2.1.61
The term "RECIPIENT" means a party which receives confidential
information of another party as described
in Section 8.
2.1.62 The term
"RELATED AGREEMENTS" means this LICENSE AGREEMENT, the
LICENSE ACQUISITION AGREEMENT, and all
other license agreements entered
into by D&PL and SYNGENTA pursuant to the LICENSE ACQUISITION
AGREEMENT, as such agreements may be
amended from time to time in writing.
2.1.63 The term
"RESPONSIBLE PARTY" shall have the meaning ascribed to that
term in Subsection 4.5(d)(ii).
2.1.64
The term "ROYALTY" means the compensation to be paid by D&PL to
SYNGENTA for the LICENSES equal to the
SYNGENTA ROYALTY PERCENTAGE multiplied by
the NET TECHNOLOGY FEE REVENUE.
2.1.65 The term
"SEED DROP RATE" means the average number of cotton seeds,
as reasonably determined by D&PL, which
cotton growers in a particular PRICING
REGION or in any distinct subdivision
thereof typically plant on an acre of farm
land to achieve an appropriate plant
population for cotton production.
2.1.66 The term
"SEED PURITY
STANDARD" means the standard for genetic
purity of LICENSED COMMERCIAL SEED as set forth in Exhibit E to
this LICENSE
AGREEMENT, as the same may be amended in
accordance with
Subsection 4.4(a)
of
this LICENSE AGREEMENT.
2.1.67
The term "SPECIAL TECHNOLOGY FEE PANEL" shall have the meaning
ascribed to that term in Subsection
6.1(d)(iv).
<PAGE>
2.1.68 The term
"SUBLICENSEE CULTIVAR"
means a cultivar of cotton produced
from germplasm which a third party that is sublicensed by D&PL under this
LICENSE AGREEMENT has the right to use for
plant-breeding purposes.
2.1.69 The term
"SUBLICENSEE VIP3A
CULTIVAR" means a SUBLICENSEE CULTIVAR
which contains a VIP3A GENE.
2.1.70 The term
"SYNGENTA" means collectively, SYNGENTA CROP PROTECTION AG
and its AFFILIATES, including but not
limited to SYNGENTA AG, provided that if a
notice is required to be given to
SYNGENTA, or a document is to be executed
by
SYNGENTA under Section 14.5, the term shall
mean SYNGENTA CROP PROTECTION AG.
2.1.71 The term
"SYNGENTA AG" means Syngenta AG, a company organized under
the laws of Switzerland, having a place of business at
Schwarzwaldallee 215, CH
- 4058, Basel, Switzerland.
2.1.72 The term
"SYNGENTA GENE" means a GENE owned by, or
licensed to,
SYNGENTA expressing a trait not
naturally occurring in cotton or modulating
expression of a characteristic naturally found in cotton. SYNGENTA GENES may
consist of INSECT RESISTANCE GENES and
NON-INSECT RESISTANCE GENES.
2.1.73 The term
"SYNGENTA ROYALTY PERCENTAGE" means thirty percent (30%).
2.1.74
The term "SYNGENTA CROP PROTECTION AG" means Syngenta Crop
Protection AG, a company organized under
the laws of Switzerland, having a place
of business at Schwarzwaldallee 215, CH -
4058, Basel, Switzerland.
2.1.75 The term
"SYNGENTA TECHNOLOGY" means information, data, know-how and
technology which are owned by SYNGENTA
or licensed to
SYNGENTA (other than
by
D&PL) that relates to the use of a VIP3A GENE in cotton including, but not
limited to, information and technology relating to cells and seeds of
cotton
plants, DNA sequences and probes therefor
transformation
methodology,
tissue
cultures, assays, residue analyses,
regeneration and selection procedures, plant
genetic constituents, vectors useful in transforming
such genetic constituents,
construction and use of such vectors in cotton.
SYNGENTA TECHNOLOGY shall not
<PAGE>
**CONFIDENTIAL TREATMENT REQUESTED BY DELTA
AND PINE LAND COMPANY**
include information, data, know-how, or technology that has become part
of the
public domain through no fault of D&PL or
which is or has been provided to D&PL
as evidenced by D&PL'S written records,
by a third party having no obligation of
confidentiality to SYNGENTA with respect
thereto.
2.1.76
The term "TECHNOLOGY" means SYNGENTA TECHNOLOGY and/or D&PL
TECHNOLOGY as appropriate.
2.1.77 The term
"TECHNOLOGY FEE" means the consideration (in whatever
form
of value capture) received from LICENSED
GROWERS for the rights to use the VIP3A
GENE embodied in LICENSED COMMERCIAL SEED to produce a
single commercial cotton
crop, the amount of which shall be
established as provided in Subsection 6.1.
2.1.78 [Text In
Exhibit I]
2.1.79 The term
"THE TERRITORY" means the world.
2.1.80 The term
"UNIT" means a
quantity of packaged
delinted cotton
seed
containing 250,000 seed; provided that in
all calculations involving UNITS, seed
being processed or that is packaged in
other size containers
shall be converted
to 250,000 seed UNITS.
2.1.81 The term
"VARIETAL NAME" means a word or combination of words or
other combination of letters or numbers
which identifies a cotton variety.
2.1.82 The term
"VIP3A GENE" means a GENE(S) and/or genetic construct(s)
inserted into the cotton genome that encode
part or all of a VIP3A protein.
2.1.83 The term
"VIP3A GENE EVENT" means a transformation event by which a
VIP3A GENE is inserted in the genome of a sexually viable cotton plant,
including, but not limited to, the
transformation events designated by SYNGENTA
as the ***** series and the *****
series and any back-up
or additional
VIP3A
GENE transformation events resulting from current or
subsequent work by or on
behalf of SYNGENTA.
2.1.84 The term
"VIP3A GENE TRADEMARK" means a trademark owned by SYNGENTA
relating to the VIP3A GENE.
2.1.85 The term
"VIP3A GENE TRADEMARK LICENSE AGREEMENT" means an agreement
in substantially the form attached hereto as Exhibit B, as the same may be
completed and/or amended from time to time
by written agreement
of the PARTIES
on a country by country basis.
<PAGE>
2.2 STATUTORY
REFERENCES.
Each reference in this LICENSE
AGREEMENT to a
---------------------
statute or a provision of a statute shall be construed as a reference to
that
statute or provision as it exists on the EFFECTIVE DATE, and any amended or
successor statute.
2.3 DEFINED
TERMS. Terms appearing
in all upper-case
letters, other
than
-------------
section headings and U.C.C.-related disclaimers of warranties,
shall have the
meanings set forth in Subsection 2.1.
SECTION 3 -- LICENSES
------------------- -----------
3.1 LICENSE TO
VIP3A GENE. SYNGENTA
hereby grants to D&PL, and D&PL hereby
---------------------
accepts, on and subject to the terms and
conditions of this LICENSE AGREEMENT, a
license in THE TERRITORY, under the LICENSED PATENT RIGHTS and SYNGENTA
TECHNOLOGY, to sublicense LICENSED GROWERS to use LICENSED
COMMERCIAL
SEED
containing the VIP3A GENE (alone or in
combination with other
SYNGENTA GENE(S)
and/or NON-SYNGENTA GENE(S)) to produce a single
commercial
cotton crop. The
terms and conditions of such sublicense to
LICENSED GROWERS (whether in the form
of grower license agreement executed by
LICENSED GROWERS or wording on container
labels or sales documents used in lieu of execution of grower license
agreements) shall be recommended by D&PL
and adopted by the LICENSE MANAGEMENT
COMMITTEE in accordance with Subsection 3.7(e) and Subsection 4.4(c) of
this LICENSE AGREEMENT.
3.2 LICENSE TO
PRODUCE AND SELL LICENSED COMMERCIAL SEED. SYNGENTA hereby
-----------------------------------------------------
grants to D&PL, and D&PL hereby accepts, on and subject to the terms and
conditions of this LICENSE AGREEMENT,
a license in THE
TERRITORY under LICENSED
PATENT RIGHTS and SYNGENTA TECHNOLOGY (a)
to test, develop and produce (directly
or through the services of third parties)
LICENSED COMMERCIAL SEED, and (b) to
sell (directly or through third party
distributors and dealers, by sublicense or
otherwise) LICENSED COMMERCIAL SEED to the
LICENSED GROWERS sublicensed by D&PL
under LICENSED PATENT RIGHTS and SYNGENTA TECHNOLOGY to use the VIP3A GENE
embodied in such LICENSED COMMERCIAL
SEED.
3.3 LICENSE TO
MULTIPLY LICENSED
COMMERCIAL
SEED. The rights granted to
-----------------------------------------------
D&PL include the right to multiply
LICENSED COMMERCIAL SEED (for subsequent sale
to LICENSED GROWERS) directly or through third party
contract growers selected
by D&PL (in any country in THE TERRITORY where SYNGENTA and/or D&PL have
<PAGE>
obtained all necessary government approvals
for such seed multiplication) and to
carry out all other activities reasonably necessary for the
production for sale
of LICENSED COMMERCIAL SEED.
3.4 EX-U.S.
SUBLICENSES.
In addition to
sublicenses to LICENSED GROWERS,
--------------------
distributors and dealers, in countries outside the United
States of America
D&PL may grant sublicenses to third
parties under the LICENSES granted to D&PL
in Subsections 3.1, 3.2 and 3.3. D&PL shall give notice to SYNGENTA of
the grant of such sublicenses. D&PL shall require any such sublicensee
to agree in writing to comply with the
terms and conditions of this LICENSE
AGREEMENT applicable to D&PL in its
sublicensed territory.
D&PL shall
have
no right to sublicense except as provided in Subsections
3.1, 3.2, 3.3 and
3.4. [Text In Item 3 of Exhibit K]
3.5 RIGHTS
RETAINED BY SYNGENTA.
---------------------------
(a) Except as
provided in
Subsections 3.5(b) and
3.5(c) and in Subsection
4.3(k), the LICENSES granted in Subsections 3.1, 3.2,
3.3 and 3.4 shall be the
only licenses granted by SYNGENTA under the
LICENSED PATENT RIGHTS and SYNGENTA
TECHNOLOGY in THE TERRITORY with respect to
VIP3A GENE in cotton.
(b) The
provisions of Subsection 3.5(a) notwithstanding, except as
provided
in Subsection 3.5(c)(i) and/or Subsection 4.3(k), during the period prior to
occurrence of one or more of the events expressly described in Subsection
3.5(c)(ii), SYNGENTA shall retain a right,
without the right to
grant licenses
to third parties or to use the services of
third parties engaged in the breeding
or sale of cotton planting seed other than to provide (1)
ordinary farming
or
harvesting services, (2) seed delinting and ginning
services, (3) laboratory
services and/or (4) testing in field trials conducted by United States
Department of Agriculture and public
university
trialists in the
United States
of America, to test, develop, produce, and have produced, but not to sell or
otherwise commercialize, cottonseed containing the VIP3A
GENE in any germplasm
and cotton cultivars owned by SYNGENTA or licensed by SYNGENTA from third
parties. Use of the services of third
parties described in items (1) through (4)
in the preceding sentence shall be subject to an appropriate written
confidentiality agreement being executed by each such third party
and, in the
case of the services described in items (2) and (3), receipt of D&PL's prior
written consent, which will not be unreasonably
withheld or delayed.
SYNGENTA
and its AFFILIATES shall not sell or otherwise commercialize cottonseed
containing the VIP3A GENE EVENT except as expressly permitted in Subsection
<PAGE>
3.5(c)(ii), and/or Subsection 4.3(k). Except
[Text in Item 4 of Exhibit K]
and, except pursuant to the COMMERCIAL
DEVELOPMENT PLAN, during the period prior
to occurrence of one or more of the events
expressly described in Subsection
3.5(c)(ii), SYNGENTA shall not make and shall use commercially reasonable
efforts not to permit others to make public
comments concerning
the performance
of the VIP3A GENE in cotton cultivars owned
by SYNGENTA or third parties. Except
pursuant to the COMMERCIAL DEVELOPMENT PLAN, SYNGENTA shall not conduct and
shall use commercially reasonable efforts
not to permit third parties to conduct
trials involving cultivars that incorporate
a VIP3A GENE which utilize DELTAPINE
VIP3A CULTIVARS and/or SUBLICENSEE VIP3A CULTIVARS for comparison or
as checks
or controls. SYNGENTA'S rights described in
this Subsection 3.5(b) shall include
the right to stack the VIP3A GENE with any
other SYNGENTA GENE or
NON-SYNGENTA
GENE. Restrictions in this Subsection 3.5(b) on SYNGENTA'S rights to use and
license the VIP3A GENE shall not apply (i)
after the occurrence
of one or more
of the events expressly described in Subsection 3.5(c)(ii) or (ii) in any
country in THE TERRITORY after the date on
which SYNGENTA'S right to receive the
ROYALTY for use of the VIP3A GENE expires in that country as provided in
Subsection 6.3 or (iii) in any country as
to which D&PL has notified SYNGENTA or
is deemed to have notified SYNGENTA that it will not commercialize LICENSED
COMMERCIAL SEED with the VIP3A GENE in that country in accordance with
Subsection 4.3(k).
(c) [Text In
Exhibit J]
(d) Any other
provision of Subsection 3.5 notwithstanding, so long as D&PL
or its corporate successor is selling LICENSED
COMMERCIAL SEED,
SYNGENTA shall
use commercially reasonable efforts not to sell and shall use commercially
reasonable efforts (which efforts shall include,
but shall not be
limited to,
incorporating such requirements in all licenses with permitted
licensees and
using reasonable efforts to enforce such
requirements) not to permit any of its
permitted licensees to sell (i) any LICENSED
COMMERCIAL SEED unless SYNGENTA or
such licensee has confirmed to its reasonable satisfaction that the subject
cultivar of LICENSED COMMERCIAL SEED meets the
AGRONOMIC CRITERIA as reasonably
determined by SYNGENTA or such licensee
based on equivalent
testing required by
D&PL to verify compliance with
AGRONOMIC CRITERIA,
(ii) any LICENSED COMMERCIAL
SEED that does not meet the SEED PURITY
STANDARDS and GENE EQUIVALENCY STANDARDS
applicable to LICENSED COMMERCIAL SEED sold by D&PL or its
sublicensees,
nor
<PAGE>
**CONFIDENTIAL TREATMENT REQUESTED BY DELTA
AND PINE LAND COMPANY**
(iii) any LICENSED COMMERCIAL SEED in any country in THE
TERRITORY in which
GOVERNMENT APPROVAL has not been obtained;
provided that SYNGENTA
shall have no
liability to D&PL under this LICENSE
AGREEMENT or any
RELATED AGREEMENT
unless
D&PL can prove that D&PL or its
sublicensees
have suffered
losses of sales of
LICENSED COMMERCIAL SEED as a result of SYNGENTA not having used such
commercially reasonable efforts to prevent the
marketing of LICENSED COMMERCIAL
SEED not satisfying the requirements of
this Subsection 3.5(d).
(e) *****.
(f) *****.
3.6 COMBINED
GENE COTTON SEED.
-------------------------
(a) D&PL may
incorporate in LICENSED COMMERCIAL SEED any SYNGENTA GENE that
is licensed to D&PL and/or any
NON-SYNGENTA GENE; [Text In Item 5 of Exhibit K].
Upon request from D&PL, SYNGENTA shall provide commercially reasonable
assistance to D&PL in obtaining
any government clearances or approvals (in
addition to GOVERNMENT APPROVAL for the VIP3A GENE and/or VIP3A GENE EVENT)
required for sale by D&PL of COMBINED
GENE COTTON SEED as follows: (i) SYNGENTA
shall provide such commercially reasonable assistance at SYNGENTA'S cost
(without reimbursement from D&PL) with respect to government approvals,
clearances and GOVERNMENT APPROVAL for COMMERCIAL
SALE of COMBINED GENE
COTTON
SEED incorporating a NON-SYNGENTA GENE that is a HERBICIDE
TOLERANCE GENE as
described in Exhibit H, which COMBINED GENE
COTTON SEED has been developed by or
on behalf of D&PL to satisfy the
requirements of
Subsection 3.6(b) and
(ii) as
to any COMBINED GENE COTTON SEED, other than that described in subpart (i)
immediately above, (A) such commercially
reasonable assistance
shall consist of
providing D&PL with access to relevant
plant materials,
purified VIP3A proteins
and all regulatory applications,
regulatory data and
other data and information
owned or developed by SYNGENTA prior to the EFFECTIVE DATE and/or during the
term of this LICENSE AGREEMENT for registration of the
VIP3A GENE or VIP3A GENE
EVENTS with respect to which D&PL has rights to use in cotton, and such
additional assistance SYNGENTA may agree to
provide pursuant to mutual agreement
between SYNGENTA and D&PL, and (B) D&PL shall reimburse SYNGENTA for the
reasonable costs of such assistance provided by SYNGENTA at D&PL'S express
request, which costs of assistance
shall be based on the
then current FTE RATE
plus reimbursement of out of pocket third party
expenses. In accordance with
Subsection 4.3(h), the budget for such assistance shall be agreed upon in
<PAGE>
advance of the assistance being provided. SYNGENTA shall not be required to
provide assistance under this Subsection 3.6(a) with respect to any country
after the date on which the period in which SYNGENTA'S right to receive the
ROYALTY for use of the VIP3A GENE has
commenced and has subsequently expired in
that country as provided in Subsection 6.3.
Notwithstanding any
other provision
in this LICENSE AGREEMENT, SYNGENTA shall not be obligated to obtain or to
provide assistance with respect to government clearances, approvals, or
GOVERNMENT APPROVAL for any COMBINED GENE
COTTON SEED that requires regulatory
and other data with respect to a
NON-SYNGENTA
GENE contained therein or with
respect to the combination of the VIP3A GENE
and/or other SYNGENTA
GENE(S) and
the NON-SYNGENTA GENE(S) contained therein,
unless D&PL at its cost and expense,
if any, provides SYNGENTA with access and rights to use such
regulatory
and
other data for purposes of obtaining
or providing assistance with respect to
such government clearances, approvals or GOVERNMENT
APPROVAL of the
COMBINED
GENE COTTON SEED. Nothing in this LICENSE
AGREEMENT shall
require SYNGENTA
to
obtain or to provide assistance with respect to government clearances,
approvals, or GOVERNMENT APPROVAL for a NON-SYNGENTA GENE except as may be
necessary in connection with GOVERNMENT APPROVAL of a combination of such
NON-SYNGENTA GENE with a SYNGENTA GENE.
(b) D&PL
shall use commercially reasonable efforts to incorporate in
LICENSED COMMERCIAL SEED of DELTAPINE VIP3A
CULTIVARS a NON-SYNGENTA GENE that
is a HERBICIDE TOLERANCE GENE.
3.7 CONDITIONS ON LICENSES. In partial consideration for the above
------------------------
LICENSES:
(a) D&PL
shall choose VARIETAL NAMES to designate cotton seed of DELTAPINE
VIP3A CULTIVARS.
(b) At
SYNGENTA'S written
request, D&PL shall conspicuously display on
packages and/or containers containing LICENSED COMMERCIAL SEED, covered
by the
LICENSED PATENT RIGHTS and/or on invoices
relating to such
LICENSED
COMMERCIAL
SEED to be sold or transferred to third parties, the following notice, or a
notice having substantially the same meaning and effect, with the blanks
appropriately filled in:
THESE SEEDS
ARE COVERED UNDER [APPLICABLE COUNTRY] PATENT(S)
___________. NO SUBLICENSE IS CONVEYED UNDER SAID PATENTS TO USE
THESE
<PAGE>
SEEDS SOLELY BY THE
PURCHASE OF SUCH SEEDS. A SUBLICENSE UNDER SAID
PATENTS TO USE THESE
SEEDS TO PRODUCE A
SINGLE COTTON
CROP MUST BE
----
OBTAINED FROM [D&PL].
(c) D&PL
shall use commercially
reasonable
efforts not to sell
and shall
use commercially reasonable efforts (which efforts
shall include, but shall not
be limited to, incorporating such
requirements in all licenses with sublicensees
and using commercially reasonable efforts to enforce such
requirements) not to
permit its sublicensees to sell LICENSED
COMMERCIAL SEED that
does not meet the
AGRONOMIC CRITERIA, SEED PURITY STANDARDS and GENE
EQUIVALENCY
STANDARDS and
which does not otherwise meet the
warranties set forth in Subsection 11.2(a) of
this LICENSE AGREEMENT; provided that D&PL shall have
no liability to SYNGENTA
under this LICENSE AGREEMENT or any RELATED
AGREEMENT (except as provided in
Section 13) unless SYNGENTA can prove that
SYNGENTA has suffered losses as a
result of D&PL'S not having used such
commercially reasonable efforts to prevent
the marketing of LICENSED COMMERCIAL SEED not satisfying the
requirements
of
Subsection 3.7(c). D&PL shall require in any
sublicense
granted pursuant to
Section 3.4 that the sublicensee shall not sell LICENSED COMMERCIAL SEED of
DELTAPINE VIP3A CULTIVARS or SUBLICENSEE
VIP3A CULTIVARS that
does not meet the
AGRONOMIC CRITERIA, SEED PURITY STANDARDS,
and GENE EQUIVALENCY
STANDARDS and
which does not meet the warranties set forth in Subsection 11.2(a) of this
LICENSE AGREEMENT.
(d) D&PL
shall not modify, use, isolate, analyze, sequence or
characterize
any DNA sequence contained in a VIP3A GENE that is
physically
isolated from a
seed, plant or cell culture that has
been transferred
by SYNGENTA to
D&PL, or
progeny of such seed, plant or cell culture,
for any purpose
without the prior
written consent of SYNGENTA; provided, however, that (i) D&PL may
identify and
utilize DNA sequences in furtherance of its activities under this LICENSE
AGREEMENT and (ii) the prohibitions of this
Subsection 3.7(d) shall not apply to
modification or use of such DNA sequences that has become part of the public
domain in the subject country through no fault of D&PL or which D&PL has
received from a third party having no
obligation of confidentiality to SYNGENTA.
As used in this Subsection 3.7(d),
material shall be
deemed to have become part
of the public domain if a member of the public in the subject country can
lawfully sell or transfer the material without infringing a valid claim of a
LICENSED PATENT.
<PAGE>
(e) D&PL and
SYNGENTA, acting
through the LICENSE MANAGEMENT COMMITTEE in
accordance with Subsection 4.4(c),
will approve the terms
and conditions of any
form of sublicense agreement to be executed by
LICENSED GROWERS or
the wording
of container labels or sales documents used in lieu of execution of a
grower
license agreement, which may include provisions required to maintain the
GOVERNMENT APPROVALS (such as the requirement
for insect resistance
management
and stewardship), and restrictions on the licensee to grow only a single
commercial crop from the LICENSED COMMERCIAL SEED purchased. D&PL will be
responsible for enforcing the terms and
conditions of this sublicense agreement.
D&PL shall use commercially reasonable efforts to collect all TECHNOLOGY
FEES
due with respect to LICENSED COMMERCIAL
SEED sold by D&PL. D&PL shall require in
sublicenses with permitted sublicensees that such
sublicensees use commercially
reasonable efforts to collect all TECHNOLOGY
FEES due with respect
to LICENSED
COMMERCIAL SEED sold by such sublicensees. SYNGENTA shall use commercially
reasonable efforts to collect, and shall require that any
permitted
licensees
(including but not limited to any third
parties listed in Item
6 of Exhibit K)
to use commercially reasonable efforts to collect, all
TECHNOLOGY FEES due with
respect to sales of LICENSED COMMERCIAL SEED on which D&PL is entitled to
receive a portion of the TECHNOLOGY
FEE.
3.8 GENE
TRADEMARK.
--------------
(a) D&PL shall conspicuously display the VIP3A GENE TRADEMARK and
accompanying logo on all packages of
LICENSED COMMERCIAL SEED in accordance with
the VIP3A GENE TRADEMARK LICENSE AGREEMENT.
SYNGENTA shall
utilize, and require
any other permitted licensees to utilize, the same VIP3A GENE TRADEMARK in
the
same manner prescribed in the VIP3A GENE TRADEMARK LICENSE AGREEMENT on all
packages of LICENSED COMMERCIAL SEED.
(b) It is agreed
that the VIP3A GENE TRADEMARK shall be licensed to D&PL on
a non-exclusive royalty-free basis pursuant to the
VIP3A GENE TRADEMARK LICENSE
AGREEMENT. The parties shall execute said
VIP3A GENE TRADEMARK LICENSE AGREEMENT
following identification of the final graphic form of the
VIP3A GENE TRADEMARK
by SYNGENTA.
(c) The VIP3A
GENE TRADEMARK shall
be utilized in the manner specified in
the VIP3A GENE TRADEMARK LICENSE AGREEMENT. SYNGENTA shall inform D&PL of
the
final graphic form of the VIP3A GENE
TRADEMARK to be used on LICENSED COMMERCIAL
<PAGE>
SEED as soon as practicable, and in no event later than June 15 prior to the
marketing year in which the VIP3A GENE
TRADEMARK is to be used.
3.9 THIRD PARTY
VIOLATIONS OR INVALIDITY OF RESTRICTIONS ON SUBLICENSE. The
------------------------------------------------------------------
use of LICENSED COMMERCIAL SEED or its progeny by
LICENSED GROWERS for purposes
other than, or in addition to, production
of a single commercial commodity crop,
unless expressly authorized by D&PL,
shall not be
considered a breach of this
LICENSE AGREEMENT by D&PL. The LICENSE granted to D&PL shall not be
revoked,
diminished, or otherwise affected in the event that the limitations and
restrictions of the license or sublicense to purchasers are found to be
unenforceable as a matter of law, in whole or in part, by any court or
government agency.
SECTION 4 -- COMMERCIAL DEVELOPMENT ACTIVITIES OF THE PARTIES
-------------------------------------------------------------
4.1 COMMERCIAL
DEVELOPMENT PLAN.
SYNGENTA and D&PL
shall cooperate in the
----------------------------
commercial development activities outlined in the
COMMERCIAL DEVELOPMENT PLAN.
The COMMERCIAL DEVELOPMENT PLAN will be adopted,
and may be revised and amended
as necessary, by SYNGENTA and D&PL, acting through the LICENSE MANAGEMENT
COMMITTEE, in accordance with the procedures for decision
making set forth
in
Subsection 4.5 of this LICENSE AGREEMENT.
The COMMERCIAL
DEVELOPMENT PLAN shall
include:
(a) Activities to obtain and maintain GOVERNMENT APPROVALS for
commercialization of LICENSED COMMERCIAL SEED including activities to be
undertaken by SYNGENTA at its expense
(subject to
reimbursement by
D&PL to the
extent provided in this LICENSE AGREEMENT) and the field evaluation and
development of GENE EVENTS and field
testing of LICENSED
COMMERCIAL SEED to
be
undertaken by D&PL at its expense;
and
(b) Activities undertaken to provide LICENSED COMMERCIAL SEED for
COMMERCIAL SALE by D&PL and its
permitted sublicensees.
The COMMERCIAL
DEVELOPMENT PLAN shall
also include specific activities and
standards, targeted timelines and the
responsibility of each PARTY with respect
to each such activity.
4.2
CONSULTATION. SYNGENTA
and D&PL shall consult regularly throughout the
------------
term of this LICENSE AGREEMENT relative to
activities affecting
the development
<PAGE>
and maintenance of sales of LICENSED COMMERCIAL SEED by D&PL and its
sublicensees, including but not limited to,
SYNGENTA'S creation
and release of
VIP3A GENE EVENTS for COMMERCIAL
DEVELOPMENT,
D&PL'S plans for
and progress in
production and field testing of such
LICENSED COMMERCIAL SEED, intellectual
property protection including activities to obtain and maintain
intellectual
property rights covering VIP3A GENES, VIP3A GENE EVENTS and related
SYNGENTA
TECHNOLOGY, freedom to operate, regulatory
approvals and other matters of mutual
interest to the PARTIES. The LICENSE MANAGEMENT COMMITTEE shall periodically
meet as described in Section 4.5 to discuss such activities and progress
hereunder. Subject to any obligations of
confidentiality
to third parties
and
subject to neither PARTY'S being required to waive
attorney client
privilege,
SYNGENTA and D&PL shall provide each
other with all data, reports, documents and
information reasonably required for the
LICENSE MANAGEMENT COMMITTEE to perform
its responsibilities.
4.3 GENE PROTECTION AND REGULATORY
ACTIVITIES.
-----------------------------------------
As owner and
licensor of the LICENSED PATENT RIGHTS and the SYNGENTA
TECHNOLOGY and in consideration for its
share of the NET TECHNOLOGY FEE REVENUE,
SYNGENTA shall be responsible for activities to support such licensing,
including but not limited to the
following:
(a) Subject to Section 12, SYNGENTA shall use commercially reasonable
efforts, necessary in its judgment,
to obtain and maintain
protection of VIP3A
GENE, VIP3A GENE EVENTS and related SYNGENTA TECHNOLOGY and the VIP3A GENE
TRADEMARK against unauthorized third party use in the United
States of America
and in each other country in THE TERRITORY designated by notice from D&PL to
SYNGENTA as countries where D&PL and
its sublicensees
intend to commercialize
LICENSED COMMERCIAL SEED, including payment of all expenses
to prepare, file,
prosecute, maintain and defend product and/or process patents and trademark
registrations that cover the VIP3A GENE,
VIP3A GENE EVENTS, and related SYNGENTA
TECHNOLOGY and the VIP3A GENE TRADEMARK in each such country and to
prosecute
legal actions against infringement of such
patent or trademark rights. SYNGENTA
shall perform such activities at its sole
expense, provided that
SYNGENTA shall
be entitled to reimbursement of its reasonable
and necessary cost of patent and
trademark infringement actions from recoveries from
infringing third
parties.
<PAGE>
Notwithstanding the above, any decision to
prosecute infringement
actions and
the extent of such actions shall be at the
sole discretion of SYNGENTA.
(b) SYNGENTA
shall support the
development and
commercialization of
each
VIP3A GENE EVENT approved for COMMERCIAL DEVELOPMENT by developing gene and
event specific PCR primers and
protocols for detection of the VIP3A GENE
and
each VIP3A GENE EVENT that is released for field testing, developing event
specific PCR primers and protocols for
detection and zygosity
determination of
each VIP3A GENE EVENT released to D&PL, developing ELISA strip and plate
antibodies and protocols for detection of
transgenic proteins
produced by each
VIP3A GENE released to D&PL and
providing technical training and support for the
proper utilization of the above tests by
D&PL as D&PL may reasonably request.
(c) SYNGENTA shall use commercially reasonable efforts to perform the
regulatory and registration activities to obtain and maintain GOVERNMENT
APPROVAL of the VIP3A GENE and the
particular VIP3A GENE EVENT(S) designated for
COMMERCIAL DEVELOPMENT in accordance with Section 4.4(b) hereof in the
United
States of America. SYNGENTA shall bear the expense of such activities for
GOVERNMENT APPROVAL in the United States of America for the period from the
EFFECTIVE DATE and ending six and one half
(6.5) years from the EFFECTIVE DATE,
and thereafter so long as an event set
forth in Subsection
3.5(c)(ii) has not
occurred, SYNGENTA shall bear such expense
for such GOVERNMENT
APPROVAL in the
United States of America subject to reimbursement by D&PL for one hundred
percent (100%) of such expenses. [Text in Item 7 of Exhibit K]. Subject to
SYNGENTA'S providing D&PL with
necessary information to determine the amount due
for the subject twelve (12) month period, D&PL shall pay its portion of
such
expenses to SYNGENTA each year on the later of
September 30 or thirty (30) days
after D&PL receives the necessary information from SYNGENTA to determine the
amount due.
(d) Subject to
Subsection 4.3(g),
for countries outside
the United States
of America designated by D&PL in a written
notice to SYNGENTA as being those
countries in which D&PL and its sublicensees intend to commercialize the
LICENSED COMMERCIAL SEED, SYNGENTA shall
use commercially
reasonable efforts to
perform the regulatory and registration activities to obtain and maintain
GOVERNMENT APPROVAL of the VIP3A GENE and the
VIP3A GENE EVENT(S),
designated
for COMMERCIAL DEVELOPMENT. The expenses shall be borne by
SYNGENTA subject to
<PAGE>
reimbursement by D&PL for one hundred percent (100%) of such expenses,
subject to Subsection 4.3(g), provided that if an event set forth in
Section
3.5(c)(ii) occurs, such expenses in each country
outside the United
States of
America in each twelve (12) month period
ending on August 31
shall be shared by
D&PL and SYNGENTA on the basis of the
formula set forth in
Subsection
4.3(c)
based on TECHNOLOGY FEES from sales of LICENSED
COMMERCIAL SEED in the
subject
country during the subject twelve (12) month period. Upon thirty (30) days
notice, D&PL may revoke a notice given
to SYNGENTA under this Subsection 4.3(d)
in which D&PL had asked SYNGENTA to
obtain and maintain
GOVERNMENT APPROVAL
of
the VIP3A GENE and VIP3A GENE EVENTS in a
particular country
provided that D&PL
shall reimburse SYNGENTA for one-hundred (100%)
percent of the reasonable costs
of obtaining GOVERNMENT APPROVAL that have been incurred by or on behalf of
SYNGENTA or cannot reasonably be avoided as of the date of receipt of such
notice.
(e) Subject to the other provisions in Sections 3 and 4, SYNGENTA'S
activities under Subsections 4.3(c) and 4.3(d) will also include using
commercially reasonable efforts to (i) obtain import, movement and release
approvals and permits as may be necessary
to permit D&PL or its sublicensees or
D&PL'S contract growers to conduct
development and
increase activities prior to
and after GOVERNMENT APPROVAL in the subject
country and (ii)
compliance with
any post-registration and approval requirements imposed as a condition of
GOVERNMENT APPROVAL in the subject country as to which SYNGENTA has the
responsibility to maintain such
registrations or
approvals. SYNGENTA
shall use
commercially reasonable efforts to obtain such
GOVERNMENT APPROVALS and/or such
import, movement and release approvals and permits at the earliest
practical
date, provided, however, SYNGENTA makes no
representations or warranties to D&PL
that SYNGENTA will be able to obtain and/or maintain any such GOVERNMENT
APPROVAL or such import, movement and release approvals and permits or that
SYNGENTA will be able to obtain such GOVERNMENT APPROVAL or such import,
movement and release approvals and permits by the targeted
dates which may be
set forth in the COMMERCIAL DEVELOPMENT
PLAN or otherwise estimated. Subject to
the other provisions in Sections 3 and 4, SYNGENTA shall also provide
commercially reasonable assistance to D&PL
with respect to import, movement and
release approvals, clearances, and permits necessary for D&PL to conduct
counterseason nurseries, trials and seed
increases for DELTAPINE VIP3A CULTIVARS
in Costa Rica
<PAGE>
**CONFIDENTIAL TREATMENT REQUESTED BY DELTA
AND PINE LAND COMPANY**
and other countries reasonably designated by D&PL for
counterseason
nurseries,
trials and seed increases whether or not
SYNGENTA is seeking GOVERNMENT APPROVAL
in such countries.
(f) In
consideration
of SYNGENTA
obtaining in any country outside the
United States of America designated by D&PL for SYNGENTA to seek GOVERNMENT
APPROVAL for the VIP3A GENE and VIP3A GENE
EVENTS, D&PL shall
pay to SYNGENTA a
milestone payment of ***** per country
payable not later than
ninety (90) days
after SYNGENTA obtains such GOVERNMENT
APPROVAL, gives notice thereof to
D&PL
and delivers to D&PL documents,
reasonably satisfactory to D&PL, evidencing that
such GOVERNMENT APPROVAL has been obtained,
provided, however, it
is understood
by the PARTIES that SYNGENTA may be
requested by D&PL to obtain registration of
other traits in the same country pursuant to the RELATED
AGREEMENTS
and that
D&PL shall be obligated to pay SYNGENTA only one such milestone payment per
country, regardless of the number of GENES or GENE
events for which
SYNGENTA
obtains GOVERNMENT APPROVAL in such country under
this LICENSE AGREEMENT and/or
any of the RELATED AGREEMENT(S). If D&PL has notified
SYNGENTA that SYNGENTA
should seek to obtain the GOVERNMENT
APPROVAL for the VIP3A
GENE and VIP3A GENE
EVENTS in a particular country outside the United States of
America, and
D&PL
later revokes such notice after SYNGENTA
has commenced
performance and has made
regulatory filings in that country,
in the event that
D&PL obtains
GOVERNMENT
APPROVAL in that country within eighteen (18) months after the date on
which
D&PL gave such notice to SYNGENTA, D&PL shall pay to SYNGENTA
the milestone
payment of ***** for each such country,
payable not later than
ninety (90) days
after such GOVERNMENT APPROVAL has been obtained by or
on behalf of D&PL. It is
understood by the PARTIES that D&PL shall
be obligated to pay SYNGENTA only one
such milestone payment per country, regardless of the number of GENES
or GENE
events as to which GOVERNMENT APPROVALS in such country are
obtained under this
LICENSE AGREEMENT and/or any of the RELATED
AGREEMENT(S).
(g) D&PL
may, at its expense,
perform the regulatory and registration
activities required to obtain and maintain
GOVERNMENT APPROVAL of the VIP3A GENE
and VIP3A GENE EVENTS in any country
outside the United
States of America,
in
which D&PL has not designated by notice to SYNGENTA for SYNGENTA to seek
GOVERNMENT APPROVAL (or with respect to which D&PL has revoked a notice
<PAGE>
previously given under Subsection 4.3(d)), in which event Subsection 4.3(f)
shall not apply with respect to the VIP3A GENE or VIP3A GENE EVENT(S) as to
which D&PL obtains and maintains such
GOVERNMENT
APPROVAL except as expressly
set forth therein in the case where
D&PL has revoked a notice previously given
to SYNGENTA to obtain such GOVERNMENT APPROVAL. In such countries, SYNGENTA
shall provide reasonable assistance to
D&PL with respect to import, movement and
release approvals and clearances at
D&PL's expense.
Subject to Subsections 5.3
and 5.4, D&PL shall have a right to
obtain from SYNGENTA and use for the purpose
of obtaining and maintaining GOVERNMENT APPROVALS, as provided for in this
LICENSE AGREEMENT, any relevant plant
materials, purified VIP3A proteins and all
regulatory applications, regulatory data and other data and
information, owned
or developed by SYNGENTA prior to the EFFECTIVE DATE or
during the term of this
LICENSE AGREEMENT for registration of the VIP3A GENE or
VIP3A GENE EVENTS with
respect to which D&PL has rights in
cotton. D&PL at its expense shall obtain and
maintain all permits, registrations, clearances or other government or
regulatory approvals required under all applicable laws relating to seed
varieties required for the testing,
development, production and sale of LICENSED
COMMERCIAL SEED of DELTAPINE VIP3A
CULTIVARS and/or SUBLICENSEE VIP3A CULTIVARS.
(h) D&PL's obligations to reimburse
SYNGENTA for expenses of obtaining and
maintaining GOVERNMENT APPROVALS outside
the United States of America as
provided in this Section 4.3 shall be
limited to application and maintenance
fees and similar administrative, regulatory
or statutory fees or taxes payable
to government regulatory agencies,
incremental regulatory expenses incurred by
or on behalf of SYNGENTA, and expenses for
post-registration maintenance
activities included but not limited to
stewardship and insect resistance
management activities (including personnel
costs at the then current FTE RATE,
and third party out of pocket expenses)
specifically related to obtaining and
maintaining such GOVERNMENT APPROVALS in
such countries but shall not include
reimbursement by D&PL of any of
SYNGENTA'S general administrative or overhead
expenses or of any expenses of activities
required in any event for SYNGENTA to
obtain and maintain, at its sole expense
during such period, GOVERNMENT
APPROVALS in the United States of America.
There shall be no duplication of
reimbursement of costs and expenses under
this LICENSE AGREEMENT and under the
RELATED AGREEMENT(S). D&PL and SYNGENTA
must agree in advance on a budget for
any activities and expenses for which
SYNGENTA may request reimbursement from
D&PL under this LICENSE AGREEMENT,
including, but not limited to, activities (i)
to obtain or maintain GOVERNMENT APPROVALS
in countries outside the United
States of America, (ii) to obtain or
maintain GOVERNMENT APPROVALS in the United
States of America after six and one half
(6.5) years from the EFFECTIVE DATE,
(iii) to assist D&PL with obtaining and
maintaining GOVERNMENT APPROVALS, and
<PAGE>
(iv) to assist D&PL with obtaining
GOVERNMENT APPROVALS for COMBINED GENE COTTON
SEED where SYNGENTA is entitled to request
reimbursement under Subsection
3.6(a). If after good faith negotiations
SYNGENTA and D&PL do not, within one
hundred twenty (120) days, agree upon a
commercially reasonable budget for any
specific activities requested by D&PL
to be performed by SYNGENTA under Section
4.3(h), Subparts (i) through (iv), SYNGENTA
shall not, on that occasion, be
required to perform such specific
activities requested by D&PL. SYNGENTA shall
invoice D&PL quarterly, not later than
thirty (30) days after the end of each
calendar quarter, for all personnel costs
or out-of-pocket expenses for which
SYNGENTA is entitled to reimbursement under
this LICENSE AGREEMENT during the
preceding quarter. The invoice shall
itemize the services and expenses for which
reimbursement is sought. Payment of amounts
due under such invoices shall be due
thirty (30) days after receipt by D&PL.
For a period of seven (7) years,
SYNGENTA shall keep records supporting the
amounts invoiced to D&PL and shall
permit its books and records to be examined
on a confidential basis from time to
time by a national auditing firm,
reasonably acceptable to SYNGENTA, appointed
by and at the expense of D&PL, to the
extent necessary to verif
