Exhibit 10.2
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.
PATENT LICENSE AGREEMENT
This PATENT
LICENSE AGREEMENT (this “ Agreement ”) by and
between Monsanto Company, a Delaware corporation (“
Monsanto ”), and Senesco Technologies, Inc., a
Delaware corporation (“ Senesco ”) and shall be
effective as of the Effective Date.
BACKGROUND
A.
Senesco has developed certain patents and technology in the field
of improved yield and stress tolerance in plants.
B.
Senesco desires to license to Monsanto and Monsanto desires to
license from Senesco the patents and technology related to improved
yield and stress tolerance in plants in order for Monsanto to
further develop and commercialize this technology.
In consideration
of the covenants, conditions, and undertakings hereinafter set
forth, it is agreed by and between the parties as
follows:
1.
DEFINITIONS
1.1
“ Advancement to Commercial Development ” means
the ***of a***either***the***Technology or with***with such
***being***by***such***being***in a***so as to ***a ***of***that
there is a ***that a***of ***will be ***to ***for***of a
***for***in ***shall***to the ***of a***of***of the ***a***of
***of***for which ***has been ***
1.2
“ Agreement ” has the meaning set forth in the
Preamble.
1.3
“ Affiliate ” means any corporation, association
or other entity which directly or indirectly Controls, is
Controlled by or is under common Control with the party in
question.
1.4
“Commercially Reasonable Efforts ” shall
mean, with respect to the efforts expended by Monsanto, those good
faith efforts to research, develop and commercialize Product(s),
that Monsanto would normally use to accomplish a similar objective
under similar circumstances taking into consideration all factors
(including, but not limited to market, patent and regulatory)
related to such Product.
1.5
“ Conceived ” and “ Conception
” has the meaning as applied under applicable United States
patent law.
1.6
“ Confidential Information ” means (i) the
terms and conditions of this Agreement (ii) any proprietary or
confidential information or material, including all trade secrets,
in tangible form disclosed hereunder that is marked as
“Confidential” at the time it is delivered to the
receiving party, or (iii) proprietary or confidential
information or material, including all trade secrets, disclosed
orally hereunder which is identified as confidential or proprietary
when disclosed and such disclosure of confidential information is
confirmed in writing (or by facsimile or email) within thirty (30)
days by the disclosing party; provided however, that the
above information shall not be deemed Confidential Information, to
the extent the receiving party can establish by competent written
proof that such information:
1.6.1
was already known to the receiving party, other than under an
obligation of confidentiality owed to the disclosing party, at the
time of disclosure;
1.6.2
was generally available to the public or otherwise part of the
public domain at the time of its disclosure hereunder to the
receiving party;
1.6.3
becomes generally available to the public or otherwise part of the
public domain after its disclosure and other than through any act
or omission of the receiving party in breach of this
Agreement;
1.6.4
is independently developed by the receiving party without reference
to any Confidential Information disclosed by the disclosing party;
or
1.6.5
was subsequently disclosed to the receiving party by a person other
than the disclosing party without breach of any legal obligation to
the disclosing party.
1.7
“ Control ” means:
1.7.1
as to third party Confidential Information or Intellectual Property
that is in-licensed by a party, the possession of the ability to
disclose or grant the licenses or sublicenses as provided for
herein without violating the terms of any agreement or other
arrangement with any third party;
1.7.2
as to the prosecution of patent applications, the maintenance of
patent rights, and the enforcement and/or defense of patent rights,
Control includes the authority to select legal counsel, solicit
other expert advice and assistance, and to make decisions
pertaining to the conduct of patent prosecution, interferences,
patent issuance, maintenance, reissue, reexamination, patent
enforcement or defense, as applicable; and
1.7.3
as to an entity, (a) ownership of fifty percent (50%) or more
in the aggregate of the voting power of all outstanding equity
interest entitled to vote at a general election of directors of
such entity, or other ability to elect a majority of the directors
or other controlling persons of such entity, (b) ownership of
fifty percent (50%) or more of the equity interests in such entity,
or (c) ownership of fifty percent (50%) or more of the assets
of such entity.
1.8
“ Defense or Enforcement Matter ” has the
meaning set forth in Section 5.2.2.
2
1.9
“ Dispute Resolution ” has the meaning set forth
in Section 10.
1.10
“ Effective Date ” means the date of last
signature by the undersigned on the signature page hereto.
1.11
“ Exclusive License ” has the meaning set forth
in Section 2.1.
1.12
“ Intellectual Property ” means generally any
and all right title and interest in, arising from, or relating to
inventions, ideas, know-how, works of authorship and confidential
information, including copyrights, patents and patent applications,
trade secrets, trademarks, service marks, any registrations or
applications relating to any of the foregoing, and any other rights
of a similar nature or character whether now existing or hereafter
created, developed, arising or otherwise coming into being.
1.13
“ Monsanto ” has the meaning set forth in the
Preamble.
1.14
“Monsanto Field ” means corn, soy and any
hybrids and varieties thereof, in any territory in the world.
1.15
“ Net Trait Revenue ” means, with respect to
traits conferred in their entirety to a Royalty Base Product, an
amount equal to the gross trait revenue (e.g., ***) received by
Monsanto ***or***, as reasonably determined by Monsanto consistent
with its then-current custom and practice (e***on a***at the
***are***with***) all in accordance with generally accepted
accounting principles (GAAP), less all returns, customer rebates,
dealer incentives, channel and marketing programs, volume
discounts, seed service fees, cash discounts (pre-pay discounts),
local competitive response, freight and insurance, which
***are***on a***or if such ***do not ***then as ***of all ***and
***of ***) in the applicable Royalty Base Product.
1.16
“ Prime Rate ” means the base lending rate on
corporate loans from commercial banks, as published from time to
time in The Wall Street Journal.
1.17
“ Product ” means any product, good, or service
that incorporates, contains, utilizes, is enabled by or otherwise
exploits the Senesco Technology, or the making, using, selling or
importing of which would, absent the Exclusive License granted
hereunder, infringe upon Senesco’s Intellectual Property
rights.
1.18
“Proof of Concept ” means the ***in the ***that
at***of the***but not ***with at ***.
1.19
“ Reduced to Practice ” and “ Reduction
to Practice ” has the meaning as applied under applicable
United States patent law.
1.20
“ Regulatory Submission ” means a submission, or
submissions, to a U.S. regulatory authority, or such comparable
authority in countries outside of the U.S., whose purpose is to
allow for the commercial production or importation for food or feed
use in the jurisdiction governed by such regulatory authority.
3
1.21
“Research License” has the meaning set forth in Section
2.4.
1.22
“ Royalty Base Product ” means any product,
good, or service that incorporates, contains, or expresses a Trait
embodied in the Senesco Technology and the making, using, selling
or importing of which would, absent the License granted hereunder,
infringe an issued, existing, valid, and unexpired claim under an
issued, existing, valid and unexpired Senesco patent (but not a
patent application).
1.23
“ Senesco ” has the meaning set forth in the
Preamble.
1.24
“ Senesco Biological Materia l” means seeds,
vectors, germplasm, and any other cells, plants, plant tissues, and
other material provided by Senesco to Monsanto pursuant to
Section 2.3.
1.25
“ Senesco Patent Rights ” means all the patents
and patent applications listed in Exhibit A and any
amendements thereto, including any continuations, divisionals,
continuations-in-part, reissues, or foreign equivalents based on
any of the foregoing patents, patent applications or claims in
respect thereof.
1.26
“Senesco Research Crop ” means any crop other
than ***and any ***and***.
1.27
“ Senesco Technology ” means (a) the
Senesco Patent Rights, (b) any data that provided proof of concept
for the Senesco Patent Rights, including but not limited to the
coding region, promoter guidance, and vectors used for plant
transformations, and (c) any know-how, trade secrets,
processes, or other information necessary or useful to the practice
of the Senesco Patent Rights or use of the knowledge covered in
clauses (a), (b), or (c) above, provided that (b) and (c)
above shall only include that data and know-how to which Senesco
has a right to provide under this Agreement.
1.28
“ Senesco Trait ” means any biochemical,
physiological, or physical attribute or phenotype of a cell, plant,
or other organism, which trait is caused or regulated by one or
more genes, and which trait is covered by a claim under the Senesco
Patent Rights.
1.29
“ Technology Access Fee ” has the meaning set
forth in Section 3.1.
1.30
“ Term ” means the term of this Agreement
.
2.
LICENSE TO MONSANTO.
2.1
Exclusive License to Monsanto . Subject to the terms
and conditions of this Agreement, Senesco grants to Monsanto and
its Affiliates, and Monsanto accepts for itself and on behalf of
its Affiliates, an exclusive, perpetual, worldwide, sub-licensable,
license under Senesco’s interest in the Senesco Technology to
research, develop, make, have made, use, have used, import, export,
distribute, sell, offer for sale, have sold, and otherwise exploit
Products for all applications in the Monsanto Field (the “
Exclusive License ”).
4
2.2
Sublicenses . Monsanto is entitled to grant
sublicenses under the Exclusive License. Each sublicense
granted by Monsanto shall be consistent with all the terms and
conditions of this Agreement.
2.3
Access to Senesco Biological Materials and Data .
Senesco agrees to provide Monsanto within thirty (30) days of any
reasonable request by Monsanto, to the extent reasonably available,
representative samples of all Senesco Biological Material and data
necessary or useful for Monsanto to exercise the rights and
licenses granted to Monsanto pursuant to this Section 2 or
pertaining to the Senesco Technology.
2.4
Grant Back Obligations . Monsanto agrees to grant and
hereby grants to Senesco, which Senesco accepts, a nonexclusive,
nonsublicensable, non-transferable, royalty-free, worldwide
research license (the “ Research License
”) in the Senesco Research Crops to any patentable
improvements developed by Monsanto under the Exclusive License to
any invention covered by an issued claim of the Senesco Patent
Rights licensed to Monsanto. The Research License includes
the right to research, develop, make and use (but not to
distribute, sell, offer for sale, have sold, import, export, have
made or otherwise commercially exploit) any patentable improvements
covered by this Section 2.4. Senesco acknowledges and
agrees that the Research License is not a commercial
license.
2.5
Reservation of Rights . Senesco reserves and retains
title to, ownership of, or Control over all rights not expressly
granted to Monsanto pursuant to this Agreement.
3.
PAYMENTS.
3.1
Technology Access Fee . Monsanto shall pay to Senesco,
within thirty (30) days of the Effective Date, a non-refundable,
non-creditable technology access fee in the amount of ***) (the
“ Technology Access Fee ”).
(a)
Royalty Payments on Net Trait Revenue . Subject to the
terms and conditions of this Agreement, Monsanto agrees to pay to
Senesco a royalty on each Royalty Base Product sold by Monsanto, a
Monsanto Affiliate or a Monsanto sublicensee *** for each such
Royalty Base Product sold hereunder.
(b)
***pays ***for***to***for the ***of***then***may***any such
***under***but in ***of ***of the ***in***of the ***
3.2
Milestone Payments . Provided the pre-commercial
Products developed by Monsanto contain Senesco Technology or are
otherwise Royalty Base Products, Monsanto agrees to pay Senesco the
following fees (collectively, “ Milestone Fees within
sixty (60) days of achievement thereof by Monsanto, a Monsanto
Affiliate, or a Monsanto sublicensee:
(a)
***
***payable at
***
*** payable upon
***
5
*** payable upon
***
(b)
***
*** payable at
***
*** payable upon
***
*** payable upon
***
Any and all ***by
***are***any ***made in ***of each ***
3.3
Disclaimer . Senesco agrees and acknowledges that
Monsanto has no obligation under this Section 3 or otherwise under
this Agreement to pursue any regulatory or governmental approval
for any particular crop or set of crops in any particular market or
in general. Monsanto does not represent, warrant, or assert
that any royalties or Milestone Fee payments will accrue hereunder,
and any statement to the contrary by any agent, employee, officer,
director, or shareholder of Monsanto is hereby disclaimed and not
binding on Monsanto. Without limiting the generality of the
foregoing, Monsanto intends to use Commercially Reasonable Efforts
to evaluate the efficacy of the Senesco Technology.
4.
PAYMENTS; BOOKS AND
RECORDS.
4.1
Royalty Reports and Payments . After the first
commercial sale of a Product, Monsanto shall deliver written
reports to Senesco annually on or before December 31 for the prior
twelve (12) month period ending August 31st, stating in each such
report, separately for Monsanto and each of its Affiliates, the
number and description of each Product sold, the Net Trait Revenue
with respect thereto, and the calculation of royalties due
thereon.
4.2
Payment Method . All payments due under this Agreement
shall be made by check or by Electronic Funds Transfer (EFT) to a
bank account designated by Senesco. All payments hereunder
shall be made in U.S. dollars. If the due date of any payment
is a Saturday, Sunday or national holiday, such payment may be paid
on the following business day.
4.3
Late Payment Penalties . Interest shall accrue on any
late payment owed to Senesco hereunder not made within sixty (60)
days of the date such payment is due, at an annual interest rate
equal to the lesser of the Prime Rate plus two percent (2%) or the
highest rate permissible by law, with such interest accruing from
the date the payment was originally due, and any late payment
pursuant to this Section shall be credited first to interest and
then to any outstanding fees.
4.4
Currency Conversions . If any currency conversion
shall be required in connection with the calculation of payments
hereunder, such conversion shall be made using the selling exchange
rate for conversion of the foreign currency into U.S. Dollars,
quoted for current transactions reported in Reuters for the second
to last business day of the month prior to the month in which
Monsanto records such sale giving rise to the payment obligation
set forth herein.
6
4.5
Records; Inspection . Monsanto shall endeavor
reasonably to keep complete, true and accurate books of account and
records for the purpose of determining the royalty amounts payable
under this Agreement. Such books and records shall be kept at
Monsanto’s principal place of business, for at least two (2)
years following the end of the annual period to which they
pertain. These books and records of Monsanto shall be open
for inspection by Senesco during such two (2) year period by a
public accounting firm for whom Monsanto has no reasonable
objection, solely for the purpose of verifying royalty statements
hereunder. Such inspections may be made no more than once
each calendar year, and no more than once with respect to the
period inspected, at reasonable times and on reasonable
notice. Inspections conducted under this Section 4.4
shall be at Senesco’s expense and may not be conducted on a
contingent fee basis; provided, however, that if a variation
or error producing an increase exceeding ten percent (10%) of the
royalty amount stated for any period covered by the inspection is
established in the course of any such inspecti
|
