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Exhibit 10.11
CONFIDENTIAL
***PORTIONS OF THE EXHIBIT HAVE BEEN OMITTED PURSUANT TO A REQUEST FOR
CONFIDENTIAL TREATMENT UNDER RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
THE COMPLETE EXHIBIT, INCLUDING THE PORTIONS FOR WHICH CONFIDENTIAL TREATMENT
HAS BEEN REQUESTED, HAS BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION.
RESEARCH AGREEMENT
GENENCOR INTERNATIONAL, INC. AND
THE PROCTER & GAMBLE COMPANY
This Agreement is effective June 30, 2000, between GENENCOR
INTERNATIONAL, INC. (together with its Affiliates, "GCOR"), a Delaware
corporation with offices at 200 Meridian Centre Boulevard, Rochester, New York
14618, and THE PROCTER & GAMBLE COMPANY, (together with its Affiliates, "P&G"),
an Ohio corporation with offices at One Procter & Gamble Plaza, Cincinnati, Ohio
45202.
WHEREAS, P&G has unique skills and technology specific to the
development and use of laundry and cleaning product formulations desired by
consumers and institutional users, and has the ability to manufacture and sell
such products globally;
WHEREAS, GCOR has unique skills and technology specific to the
development of enzymes and other materials obtainable from biological systems,
and has the ability to commercially supply such enzymes and other materials in
industrial quantities;
WHEREAS, the Parties desire to enter into this Agreement to cooperate in
an iterative program of specific research projects, which utilize each Party's
unique abilities;
WHEREAS, the Parties desire to agree upon specific Success Criteria for
each specific research project with the challenging goal of identifying new raw
materials which can be formulated into laundry and cleaning products as well as
certain other products sold by P&G to provide breakthrough levels of consumer
noticeable benefits;
WHEREAS, the Parties recognize the highly uncertain nature of the
research projects desired to be conducted, including the uncertainty regarding
whether one or both Parties may develop new technologies of value to one or both
of the Parties; and
WHEREAS, the Parties contemplate that their research efforts may yield
Patent Rights which the Parties desire to license to each other consistent with
this Agreement and a Technology Transfer Agreement ("TTA"), which TTA is entered
into simultaneously herewith relating to certain current as well as these
prospective Patent Rights:
THEREFORE, in consideration of the mutual promises herein, the Parties
agree as follows.
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1. DEFINITIONS
A. "Field of Agreement" means enzymes or other materials obtained from
biological systems whether living or non-living (hereafter
"Materials") purposefully added to a formulation of Laundry and
Cleaning Products, but shall not include Materials used ***.
B. "Project" means an investigation of formulations, concepts,
technologies, processes, procedures, tests, standards or
manufacturing processes for Materials in the Project Field and for
new or improved Materials within the Field of Agreement.
C. "Project Form" means (i) when executed by one Party, that Party's
proposal to initiate a Project on a confidential basis and with
certain requirements or specifications (a "Proposed Project"), and
(ii) when executed by both Parties, the Parties' mutual agreement
to share certain results or specifications in a Project Field and
to undertake a Project (an "Approved Project").
Approved Projects will commence immediately upon mutual execution
of the applicable Project Form (as set out in ATTACHMENT 1), which
shall include Project Success Criteria and a project milestone
plan, and related Confidential Disclosure Agreement (as set out in
ATTACHMENT 2A). All Approved Projects shall take the form of either
Research Projects or Development Projects.
D. "Research Project" means an Approved Project devoted primarily to
research activities and continuing until the earlier of: (1) a
written notice by the Leadership Committee or either Party that the
Approved Project is terminated and no Development Project will
result; or (2) mutual execution of a Project Form for a resulting
Development Project as defined below.
E. "Development Project" means an Approved Project, which is
designated a Development Project, and commencing upon mutual
execution of a Project Form, which may include revised Success
Criteria (including commercial criteria) and based upon written
recommendation of the Leadership Committee, which Approved Project
shall be devoted primarily to development activities.
F. "Project Administrator" means for each Party, the individual whose
name, address and fax number are entered by such Party on the
Project Form or such other persons as may thereafter be designated
by written notice from time to time. At any given time, there will
be no more or less than one (1) Project Administrator per Party per
Approved Project.
G. "Project Field" means an investigation of formulations, concepts,
technologies, processes, procedures, tests, standards or
manufacturing processes for Materials under an Approved Project
within the Field of Agreement.
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H. "Laundry and Cleaning Products" means products for ***.
I. "Success Criteria" means for each Approved Project, deliverables,
timetables, detailed specifications and other mutually agreed
measures of success, all set out in writing in the applicable
Project Form. Success Criteria shall include either technical
criteria, commercial criteria or both, as appropriate to the
applicable Approved Project.
J. "Observable Benefit" means for any Material provided hereunder, a
benefit measured by a jointly agreed objective technical test
established by the Leadership Committee, which benefit results from
the use of such Material in commercially reasonable dosages in a
Laundry and Cleaning Product.
K. "Leadership Committee" means the committee composed and empowered
under the terms of SUBSECTIONS 3.H-J below.
L. "Non-Project Materials" means Materials not identified or developed
under an Approved Project but sampled for analysis in the Approved
Project by either Party. Non-Project Materials should be so
designated in writing by the sampling Party within 30 days of being
sampled into an Approved Project.
M. "Patent Rights" means patent applications and patents issuing
therefrom (both foreign and domestic) which claim an invention
conceived and/or reduced to practice pursuant to an Approved
Project. Patent Rights shall include those inventions presently
listed in SCHEDULE 1 or subsequently listed in SCHEDULE 2 of the
Technology Transfer Agreement.
N. As used herein, the term "Affiliates" for P&G means any corporation
controlling, controlled by or under common control with The Procter
& Gamble Company, through stock ownership, direct or indirect, and
for GCOR means any corporation, controlled by or under common
control with Genencor International, Inc. through greater than
seventy-five percent (75%) stock ownership. Any other party
constitutes a "non-Affiliate."
O. "*** Assay" shall mean activity and performance assays applicable
to identification of Materials for the Field of Agreement or P&G's
Business Field performed in a volume of less than *** which are
directly related to and developed during an Approved Project.
P. "*** Assay Patent Rights" means inventions and patent applications
and patents issuing therefrom (both foreign and domestic) which
relate to or claim a *** assay or *** screen which is directly
related to and developed during an Approved Project.
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Q. "Isolated Samples" means samples which are isolated or extracted
from a Library before sampling, for evaluation in P&G's *** assays.
R. "Libraries" means multiple samples which are produced through an
effort to identify Materials having desired performance
characteristics.
2. CONFIDENTIAL INFORMATION
A. Confidential Information shall have the meaning set out in
ATTACHMENT 2A and shall include cumulatively all Confidential
Information under any duly executed Confidential Disclosure
Agreement ("CDA"). Confidential Information relating to chemical
information useful in the development of screening methods will
be shared relating to the following: 1) the ***, including, for
example, ***; 2) methods for *** used under current technology;
and 3) the relevant conditions under which the *** under current
technology. All Confidential Information disclosed in connection
with any Project Form and related Proposed Project shall be
protected by such a CDA executed by the Parties. Upon execution
by both Parties of a Project Form such applicable CDA shall be
incorporated therein. CDA's shall include those listed and
attached here as a part of ATTACHMENT 3. Applicable CDA's shall
also be attached to each applicable Project Form and be
incorporated therein by reference. ATTACHMENT 2A provides a
standard CDA form for use in relation to each Project Form.
For clarity, the Parties acknowledge that each Party has an
interest in *** assays outside the Field of Agreement, only
information which is important for the development of assays
correlating to the identification and/or application of materials
in laundry and cleaning products should be shared under this
agreement. This may include information on the textile or fiber
used in the assay, the substrate used, detection methods and
detergent chemistry. The information shared should not include
information such as ***.
B. For Materials provided prior to execution of this Research
Agreement, under those Material Transfer Agreements listed and
attached hereto as ATTACHMENT 4, the Parties have agreed that
such Materials shall hereafter be governed by the terms set out
in this Research Agreement. The terms herein shall control over
any inconsistent terms contained in the respective Material
Transfer Agreements, which are hereby terminated effective as of
the execution of this Research Agreement. Further, in the event
that either Party provides samples of materials prior to entering
into an Approved Project, the Parties agree to execute a Standard
Material Transfer Agreement covering the terms under which these
samples will be provided and received; a sample form of this
agreement is provided as ATTACHMENT 2B. In the event that an
Approved Project is subsequently entered into for such sampled
materials, upon execution of the Project Form by both Parties to
establish the Approved Project, all Material Transfer Agreements
relating to sampled materials which are part of this Approved
Project are terminated and the terms herein this
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Research Agreement shall control over any inconsistent terms
contained in these earlier Material Transfer Agreements. The
Material Transfer Agreements relevant to each Approved Project
shall be attached to each applicable Project Form.
C. Any Project Form, whether executed by one or both Parties, shall
be deemed Confidential Information under the applicable CDA.
D. Upon termination or expiration of this Agreement or an Approved
Project, all CDA's shall continue in force until termination or
expiration under their own terms.
E. Either Party shall have the right to disclose Confidential
Information to any of its Affiliates which are involved in the
performance of this Agreement, provided the Affiliate in advance
has agreed in writing to be bound by the terms of this Agreement
and the applicable CDAs, and that this Party shall be liable to the
other Party to the extent that any of its Affiliates breach any
secrecy or other obligations.
3. PROJECT INITIATION AND ADMINISTRATION
A. Either Party may propose a Project by first obtaining execution by
both Parties of an applicable CDA and thereafter by forwarding two
copies of a completed Project Form, signed by the initiating Party
and including its Project Administrator, the fully executed CDA and
proposed Success Criteria.
B. The Party receiving a completed Project Form shall consider in good
faith the Proposed Project and, within the time specified in the
Project Form, shall give notice, by returning a duly executed copy
of the Project Form, that the initiating Party agrees to the
Proposed Project. The Project Form, duly executed by both Parties,
shall then become the basis for an "Approved Project" to which the
terms of this Agreement apply. Alternatively, the receiving Party
may decline to execute the Project Form, or may notify the
initiating Party that the Receiving Party wishes to pursue the
Proposed Project, but under modified Success Criteria. Further,
prior to entering into an Approved Project, the Parties may agree
that materials should be sampled in order to more fully consider
the Proposed Project; such sampled materials shall be shared
under the terms of the Standard Material Transfer Agreement, a
sample form of which is attached as ATTACHMENT 2B.
C. If either Party declines to participate in a Proposed Project,
neither Party shall have any obligation concerning such Proposed
Project, except as arise under the applicable CDA, Material
Transfer Agreements (if any), and SECTION 2 AND SUBSECTION 7.C of
this Agreement, and either Party may pursue such Project with any
other party.
D. Each Party shall provide executed Project Forms to both Project
Administrators within ten (10) days of execution by that Party.
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E. Until both Parties have executed the applicable Project Form, no
Party is obligated under any Proposed Project. This Agreement's
terms and conditions shall apply only to any Approved Projects
entered into under this Agreement. Except for Approved Projects,
nothing in this Agreement shall prevent either Party from entering
into other projects with other parties, nor is either Party
required by this Agreement to first offer such projects to the
other Party before offering such projects to a non-Party.
F. The Parties agree that Materials and formulations provided to it
by the other Party shall be used solely for the purposes intended
and necessary for the Approved Project to which the sampled
Materials or formulations are being provided, with the exception
that P&G shall have the right to test certain Materials outside the
Field of Agreement but within P&G's Business Field under the
procedures as provided hereinafter in SECTION 5. Further, the
Parties recognize that in some circumstances there may be the need
for special handling (e.g., non-analysis of samples) of Materials
or formulations being supplied to the other Party under an Approved
Project. Such special handling requirements shall be observed by
the Party receiving the special sample if the special handling
procedures are provided in writing to the receiving Party's Project
Administrator for each Approved Project to which the special sample
relates and the Project Administrator approves such special
handling requirements in writing prior to the special sample being
sent for that Project Administrator's Approved Project, or if such
special handling procedures are authorized in writing by the
Leadership Committee prior to the special samples being sent.
G. Neither Party shall, during any Approved Project and for a time
thereafter as specified herein, transfer or disclose to third
parties for use within the Field of Agreement, any Materials or
know how resulting from an Approved Project and provided to the
other Party for evaluation. Also, neither Party will, during any
Approved Project and for a time thereafter as specified below,
collaborate with third parties in a Project with substantially the
same Success Criteria as any Approved Project. Each party shall
otherwise be free to receive, evaluate and commercially use
(including supply and/or purchase) Materials for all purposes with
any third party, subject only to the provisions of this Agreement,
the applicable CDA and the TTA.
H. Each Party shall appoint up to three (3) representatives to serve
as members of the Leadership Committee to direct specific Approved
Projects and the overall course of activities under this Agreement.
Decision of the Leadership Committee shall require a unanimous
vote.
I. Subject to the oversight and approval of the Parties, the
Leadership Committee shall be responsible for the following:
(1) Overall direction of the Approved Projects, including
financial requirements for the Approved Projects and directing
activities of the Project Administrator(s);
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(2) Monitoring, updating and modifying, if necessary, all
current Approved Projects.
(3) Determination that a Research Project is completed and
recommendation of new or revised Success Criteria for a
Development Project;
(4) Scheduling and conducting biannual reviews, or such more
frequent reviews as the Leadership Committee determines
necessary;
(5) Preparation and approval of the Success Criteria, consistent
with the terms of this Agreement;
(6) Reviewing inventions made pursuant to an Approved Project
with patent counsel and facilitating patent filings as
pursued by the appropriate Party.;
(7) Recommending to the Parties the licensing of third party
technology and/or intellectual property, (if any) as
necessary for the enhancement of any Approved Project as
needed.
J. Each Party shall notify the other within thirty (30) days after the
effective date of this Agreement of the names of its Leadership
Committee members. The Leadership Committee shall have no authority
to modify or amend the terms of this Agreement. Any dispute or
issue that cannot be resolved by the Leadership Committee shall be
referred to senior management of the Parties to be resolved by
them.
4. APPROVED PROJECTS
A. Each Party shall promptly undertake performance of an Approved
Project as set forth in the applicable Project Form. During each
Approved Project, the Parties will endeavor to perform their
respective duties and to develop and submit to each other any
deliverables identified in the Approved Project's Success Criteria.
B. All work on Approved Projects shall be directed and controlled by
the designated Project Administrator of each Party, subject to
the oversight of the Leadership Committee.
C. P&G will pay GCOR for the research conducted under this Agreement
as follows.
*** of this Agreement until June 30, 2003, for a total of One
Million Five Hundred Thousand Dollars ($1,500,000), with payment to
be made by P&G *** no later than ***. In the event that P&G earlier
terminates this Agreement by giving written notice to GCOR pursuant
to SUBSECTION 7.B below on or before the June 30 end of a contract
year, then ***.
In addition, upon signing of the Success Criteria for an Approved
Project to enter into a Development Project phase from a Research
Project conducted under this Agreement, a Supplier Advance shall
become due from P&G to GCOR and shall be payable within 2 months of
signing the Success Criteria for such Development Project). The
Supplier Advance shall be based on ***.
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Further, in the event that the Parties enter directly into an
Approved Project at the Development Project phase without having
had a preceding Research Project phase, P&G shall pay GCOR a
Supplier Advance based on ***. All such payments under this
paragraph shall become due upon mutual agreement that GCOR has met
the previously agreed to and signed Success Criteria for such
Development Project, and shall be payable within two (2) months
thereafter. ***.
Any amounts which become due under this SUBSECTION C prior to any
expiration or termination of the Agreement shall be non-refundable.
D. Notwithstanding the other terms of this Agreement: (1) GCOR shall
continue to have the right to use Non-Project Materials sampled
by GCOR outside the Field of Agreement; and (2) Non-Project
Materials sampled by GCOR which show no commercially relevant
Observable Benefits in the Project Field shall be immediately
released from the Approved Project for sampling and supply by
GCOR to third parties in all Fields. For such Non-Project
Materials which show no Observable Benefit, P&G shall grant to
GCOR at GCOR's request a non-exclusive, royalty-free license
(with the right to sublicense) under all applicable Patents
Rights owned or exclusively controlled by P&G pursuant to this
Agreement or the TTA, necessary to make, have made, use and sell
such Non-Project Materials.
Notwithstanding the other terms of this Agreement: (1) P&G shall
have the right to use Materials outside the Field of Agreement only
pursuant to SECTION 5 hereinafter, with the exception that for
Non-Project Materials sampled by P&G, P&G shall continue to have
the right to use such Non-Project Materials outside the Field of
Agreement; and (2) Non-Project Materials sampled by P&G which show
no Observable Benefits in the Project Field shall be immediately
released from the Approved Project for sampling and supply by P&G
to third parties in all fields. For such Non-Project Materials
which show no Observable Benefit, GCOR shall grant to P&G at P&G's
request a non-exclusive, royalty-free license (with the right to
sublicense) under all applicable patent Rights owned or exclusively
controlled by GCOR pursuant to this Agreement or the TTA, necessary
to make, have made, use and sell such Non-Project Materials.
E. Further, Project Materials that show no Observable Benefit in the
Project Field may be released from the Approved Project for
sampling and supply by one or both of the Parties to third parties
in all fields by agreement of the Leadership Committee, but
sampling of such Material shall not require grant by either Party
to the other Party of licenses under applicable Patent Rights owned
or exclusively controlled by the other Party pursuant to this
Agreement or the TTA.
5. FIRST REFUSAL FOR SIGNIFICANT MATERIALS
A. During the term of this Agreement and for a period of two (2) years
thereafter, P&G shall have the right of first refusal to receive
samples of all Approved Project Materials
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(excluding Non-Project Materials) which demonstrate an Observable
Benefit in an Approved Project ("Significant Materials") prior to
GCOR providing for evaluation such Significant Materials to any
third party for use outside the Field of Agreement but within P&G's
Business Field. P&G may request GCOR's approval to test such
Significant Materials for use outside of the Field of Agreement but
within P&G's Business Field at any time during this period, which
approval shall not unreasonably be withheld by GCOR. Sampling of
such Significant Materials following GCOR's approval shall be under
the terms as provided hereinafter under SUBSECTIONS 5.E AND 5.F. In
the event that GCOR denies this P&G request, GCOR shall continue to
be obligated to first offer such Significant Materials to P&G prior
to GCOR sampling to any third party for evaluation within P&G's
Business Field.
B. For purposes of this Agreement, P&G's Business Field shall mean ***.
C. Prior to GCOR sampling any third party such Significant Materials
for use within a designated segment of P&G's Business Field, GCOR
shall offer P&G the right to receive a sample of each such relevant
Significant Material for P&G's evaluation in the designated segment
of P&G's Business Field.
D. P&G shall advise GCOR in writing within thirty (30) days whether it
wishes to exercise its right to receive such a sample of the
applicable Significant Material. In the event that P&G has no
interest in receiving a sample of the offered Significant Material
for use outside the Field of Agreement within P&G's Business Field,
then GCOR shall be free to sample such Significant Material to third
parties for evaluation in the designated segment of P&G's Business
Field outside the Field of Agreement as offered to P&G.
E. If P&G elects (by written notice) to receive a sample, then P&G
shall have two (2) months from the receipt of such sample of the
relevant Significant Material to evaluate P&G's interest within the
relevant portion of P&G's Business Field and to provide GCOR with
written notice of such interest. During P&G's evaluation, and upon
receipt of such notice from P&G, GCOR shall refrain from sampling
such Significant Material to third parties until the Parties
negotiate in good faith for an agreement to further research use of
such Significant Material for commercialization by P&G of GCOR
supplied Material. If after six (6) months of good faith
negotiations immediately following the two (2) month P&G evaluation,
the Parties cannot agree on terms of an agreement for further
research, then GCOR shall be free to sample such Significant
Material to third parties for evaluation in the designated segment
of P&G's Business Field; and P&G shall thereafter be free to pursue
with third parties its interest in the use of this Significant
Material within the designated segment of P&G's Business Field.
F. In the event the Parties fail to execute a research agreement as
provided for in SUBSECTIONS 5.E, then GCOR shall grant to P&G at
P&G's request a non-exclusive, royalty-free license (with the right
to sublicense) under all applicable Patent Rights owned or
exclusively controlled by GCOR pursuant to this
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Agreement or the TTA, necessary for P&G to make, have made, use and
sell such Significant Materials within P&G's Business Field but such
license shall not apply to any other Materials. In return, P&G shall
grant GCOR a first right of refusal to manufacture such Significant
Materials on terms to be negotiated in good faith by both Parties.
In the event the Parties fail to reach agreement after such good
faith negotiations, P&G shall not thereafter purchase such
Significant Materials on terms more advantageous to a third party
supplier than those it offered to GCOR.
6. PATENT RIGHTS
A. Ownership of Inventions - All Patent Rights except *** Assay Patent
Rights shall be owned by the Inventing Party (for purposes hereof,
"Inventing Party" shall mean the Party whose employees or agents
conceived and reduced to practice the invention claimed in a given
Patent Right). *** Assay Patent Rights shall be owned by GCOR
regardless of inventorship.
B. Prosecution of Patent Applications - Each Party agrees to provide
the other's Project Administrator with timely notification of all
invention disclosures resulting from an Approved Project, as well as
all filing decisions, filing dates, issue dates and patent numbers
which are associated with such invention disclosures. The Inventing
Party shall be responsible at its expense to prepare, file,
prosecute and maintain its Patent Rights, provided that both Parties
will cooperate with each other in reviewing, drafting and
prosecuting the Patent Rights of the other to the extent deemed
necessary to optimize such patent efforts.
Any patent application directed to Patent Rights shall not be filed
without notice to the other Party. The other Party will be given at
least ten (10) working days to review and comment on said patent
application, unless the other Party agrees on a term shorter than 10
days.
C. Unless otherwise agreed, each Party shall pay for the prosecution
and maintenance of Patent Rights, except as provided in SUBSECTION
6.D.
D. Each Party shall receive timely notice and the right to assume
prosecution and maintenance of any Patent Right which the other
(owning) Party elects to abandon.
Further, if a Party desires to file a patent application in
countries other than those the owning Party desires to file in, the
other party shall be free to file such patent application in the
desired other countries at its own expense.
7. DURATION AND TERMINATION OF AGREEMENT
A. Unless terminated under SUBSECTION 7.B below, this Agreement shall
continue in force until June 30, 2003. The term of this Agreement
may be extended beyond June 30, 2003 on an annual basis upon the
mutual written agreement of the Parties
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for payment and other details concerning each such extension.
B. Either Party may terminate this Agreement in its entirety or any
Approved Project (without terminating the entire agreement) at any
time by giving written notice at least ninety (90) days before such
termination becomes effective. Termination of this Agreement will
end consideration of Proposed Projects and shall terminate all
Approved Projects and all further P&G funding payments, unless such
termination notice expressly provides otherwise.
C. Survival of Obligations - All licenses, ownership rights and all
obligations relating to information about inventions, including CDA
terms, which become effective prior to effective termination or
expiration of an Approved Project or this Agreement shall survive.
D. Approved Projects begun under the Research Agreement between the
Parties effective September 1, 1997 shall continue hereunder and
shall be governed by the provisions contained in this Research
Agreement with the exception that no Supplier Advance shall be owed
for any Development Project existing prior to the June 30, 2000
effective date of this Research Agreement.
8. RIGHTS UPON TERMINATION
A. As used in this Agreement, collaboration with third parties (which
includes subsequently established joint ventures or affiliations
with, or through purchase, whole or in part, of or by parties who
are third parties as of the date of signing of this Agreement) shall
include: (i) discussing or conducting joint research and/or
development work with a third party on Materials within the Project
Field of the terminated Approved Project; and (ii) sampling, selling
or buying for use in the Field of Agreement, Materials which were
developed under the Approved Project or which were Non-Project
Materials if the anticipated or actual use of this sampled Material
has Observable Benefit within the Project Field.
B. Upon termination of a Research Project for any reason both Parties
shall refrain from collaborating with third parties in the Project
Field for five (5) years from the date of termination of the
Approved Project. However, in the event that the Success Criteria
for a Research Project are met and, within one year of having met
such Success Criteria, one party declines or fails to decide to
progress to a Development Project, then that Party (herein for
purposes of this paragraph referred to as the "Terminating Party")
shall not work with third parties to further develop or
commercialize any Materials identified from the Research Project, or
otherwise collaborate with third parties in the Project Field, for
three (3) years and thereafter the Terminating Party shall be
granted a non-exclusive, royalty-free license (without the right to
sublicense non-Affiliates) under all applicable Patent Rights
excluding *** Assay Patent Rights owned or exclusively controlled by
the other Party pursuant to this Agreement or the TTA, necessary to
then allow the Terminating Party to
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collaborate with third parties on Materials within the Project
Field. Further, the non-Terminating Party shall immediately be free
to collaborate with third parties within or outside the Project
Field. The Terminating Party shall grant to the other Party a
non-exclusive, royalty-free license (without the right to sublicense
non-Affiliates) under all applicable Patent Rights excluding ***
Assay Patent Rights owned or exclusively controlled by the
Terminating Party pursuant to this Agreement or the TTA, necessary
to allow the other Party to collaborate immediately with third
parties on Materials within the Project Field.
C. Upon termination of a Development Project as the result of P&G
decisions or actions, including P&G's failure to meet its
obligations under commercial criteria within the Success Criteria of
the Development Project, then GCOR shall immediately be free to
collaborate with third parties within or outside the Project Field.
P&G shall grant to GCOR a non-exclusive, royalty-free license
(without the right to sublicense non-Affiliates) under all
applicable Patent Rights owned or exclusively controlled by P&G
pursuant to this Agreement or the TTA, necessary to allow GCOR to
collaborate with third parties on Materials within the Project
Field. Moreover, P&G shall not collaborate with third parties in the
Project Field for five (5) years and thereafter GCOR shall grant to
P&G a non-exclusive, royalty-free license (without the right to
sublicense non-Affiliates) under all applicable Patent Rights owned
or exclusively controlled by GCOR pursuant to this Agreement or the
TTA, necessary to allow P&G to collaborate with third parties on
Materials within the Project Field.
D. Upon termination of a Development Project as the result of GCOR
decision or actions, including GCOR's failure to meet its
obligations under commercial terms set out in Success Criteria of
the Development Project, then P&G shall immediately be free to
collaborate with third parties within or outside the Project Field.
GCOR shall grant to P&G a non-exclusive, royalty-free license
(without the right to sublicense non-Affiliates) under all
applicable Patent Rights except *** Assay Patent Rights owned or
exclusively controlled by GCOR pursuant to this Agreement or the
TTA, necessary to allow P&G to collaborate with third parties on
Materials within the Project Field. Moreover, GCOR shall not
collaborate with third parties in the Project Field for five (5)
years, and thereafter P&G shall grant to GCOR a non-exclusive,
royalty-free license (without the right to sublicense
non-Affiliates) under all applicable Patent Rights owned or
exclusively controlled by P&G pursuant to this Agreement or the TTA,
necessary to allow GCOR to collaborate with third parties on
Materials within the Project Field.
E. Upon termination of a Development Project as the result of mutual
decision or actions of P&G and GCOR, including the Parties' failure
to achieve technical criteria within the applicable Success Criteria
or failure to agree on additional terms for a supply agreement other
than those specific commercial obligations for each Party in Success
Criteria of the applicable Development Project, then the Parties
shall not collaborate with third parties in the Project Field for
five (5) years, and thereafter
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both Parties shall grant to the other Party a non-exclusive,
royalty-free license (without the right to sublicense
non-Affiliates) under all applicable Patent Rights except *** Assay
Patent Rights owned or controlled by the respective Party, necessary
to allow the other Party to collaborate with third parties on
Materials within the Project Field.
In the event that termination of an Approved Project occurs during
the Development Project and either Party is prohibited from
collaborating with third parties for the period of five (5) years,
the Parties shall still be permitted during this five (5) year
period to take the following actions: (i) GCOR may after three (3)
years, sample Materials to third parties, as well as discuss supply
terms and requirements, provided such Materials shall be
commercially available only after the expiration of the five (5)
year period; and (ii) P&G may, after three (3) years, seek a
supplier for Materials, as well discuss supply term and
requirements, provided such Materials shall be commercially supplied
to P&G only after the expiration of the five (5) year period.
F. For the term of five (5) years after termination in either of a
Research Project or a Development Project, and regardless of when or
how termination occurs, GCOR shall not offer third parties better
terms for supply of Materials for use in the Project Field than
offered to P&G, nor shall P&G accept from any alternative supplier,
terms more favorable to that supplier than those offered by GCOR.
G. Upon termination after the Material is supplied on a commercial
basis by GCOR to P&G, then the terms shall be as set out in the
Heads of Supply (Appendix A) appended to the TTA.
H. For the absence of doubt, the P&G license as described in SUBSECTION
2.1(iv) of the TTA shall survive any termination hereunder.
9. LIMITED SCOPE OF THIS AGREEMENT
A. Other Agreements Not Precluded - This Agreement shall not prevent
the Parties from entering into other agreements together nor shall
it terminate duly executed, existing agreements.
B. No Warranties Created - No product or patent warranties are granted
or implied hereunder. No obligation to make any products or to
conduct infringement clearance on the other Party's products,
utilizing the Patent Rights under this Agreement, is granted or
implied.
10. INTERPRETATION
A. Captions - Captions are for convenience only and not to be used in
construing this Agreement.
13
<PAGE> 14
B. Partial Invalidity - Any provision of this Agreement held invalid or
illegal shall be severed from this Agreement and shall not impair or
invalidate any other provision. Any severed provision shall be
replaced by the valid, legal one which comes closest to such severed
provision.
C. Conflict with Project Forms - This Agreement shall prevail in any
conflict between its provisions and any Project Form, CDA, sales
literature, order, acceptance, invoice, shipping document,
correspondence, or other document.
D. Choice of Law - This Agreement shall be interpreted under the laws
of Ohio, USA.
11. GENERAL
A. Notices - All notices under this Agreement shall be in writing and
effective either when served by personal delivery or three days
after deposited, postage prepaid in registered or certified mail and
addressed to the respective Project Administrators.
B. Non-assignment - Neither Party shall assign any rights and
obligations under this Agreement or any Project Form without the
other Party's prior written consent.
C. Independent Contractors - Nothing in this Agreement shall be deemed
to create an agency, employer-employee, partnership or joint venture
relationship between the parties. The parties are independent
contractors. Neither party has the right to control the work of the
other's employees.
D. Force Majeure - Neither Party shall be responsible for delay or
failure to perform caused by events beyond its control. Each Party
shall mitigate any damage caused by such events.
12. WAIVER AND MODIFICATION
No omission or delay in enforcing any right shall be a waiver of any
such right nor shall it affect a Party's ability to enforce such right
thereafter. This Agreement may be modified only by a writing executed by P&G and
GCOR.
This Agreement is duly executed below by the Parties' duly authorized
officers.
<TABLE>
<CAPTION>
GENENCOR INTERNATIONAL, INC. THE PROCTER & GAMBLE COMPANY
<S> <C>
By : /s/ CAROLE COBB By: /s/ W.C. BERNDT
----------------------------------- -----------------------------------------------
Title: Senior Vice President Title: President, Fabric & Home Care Business Unit
-------------------------------- --------------------------------------------
Date: June 30, 2000 Date: June 30, 2000
--------------------------------- ---------------------------------------------
</TABLE>
14
<PAGE> 15
ATTACHMENT 1
PROJECT FORM
This Project Initiation Form is submitted under the Parties' Research
Agreement ("the Agreement") to establish an Approved Project upon mutual
execution below. Capitalized terms used here have the meanings assigned them in
the Agreement.
1. The parties agree to an Approved Project relating to
__________________________ which shall be directed to
________________________________________ and shall have the following
objectives and/or features:
2. The technical approach to be followed is:
3. Milestone Plan
--------------------------------------------------------------------------------
Key Milestone Timing
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
Very truly yours,
By:____________________________
Title:_________________________
ACCEPTED: ____________ , 200____
Date:__________________________
By:______________________________
Title:___________________________
<PAGE> 16
ATTACHMENT 2.A
STANDARD AGREEMENT FOR DISCLOSURE OF
PROCTER & GAMBLE CONFIDENTIAL INFORMATION
TO GENENCOR INTERNATIONAL, INC.
Effective Date: ____________
In order to protect certain proprietary, confidential information which may be
disclosed by the Procter & Gamble Company (herein "P&G") to Genencor
International, Inc. (herein "GCOR"), the parties agree that:
1. The Discloser of confidential information hereunder is:
The Recipient of confidential information hereunder is:
2. The parties' representatives for disclosing or receiving confidential
information are:
(P&G)
(GCOR)
3. The confidential information disclosed under this Agreement is described
as:
------------------------------------------------------------------------
------------------------------------------------------------------------
4. This Agreement covers only confidential information which is disclosed
between the effective date and the first anniversary of the Effective
Date.
5. GCOR's obligations regarding confidential information received under
this Agreement expires on the fifth anniversary of the Effective Date.
6. GCOR shall protect the confidential information against unauthorized
disclosure using the same degree of care, but no less than a reasonable
degree of care, as GCOR uses to protect its own confidential information
of a like nature.
7. GCOR shall be obligated to protect only such confidential information
disclosed under this Agreement as is: (a) disclosed in tangible form
clearly labeled as confidential at the time of disclosure, or (b)
disclosed initially in non-tangible form identified as confidential at
the time of disclosure and, within thirty days following the initial
disclosure, summarized and designated as confidential in a written
memorandum delivered to the GCOR's representative named in PARAGRAPH 2
above.
<PAGE> 17
8. This Agreement imposes no obligation upon GCOR with respect to any
confidential information disclosed under this Agreement which: (a) was
in the GCOR's possession before receipt from P&G; or (b) is or becomes a
matter of public knowledge through no fault of GCOR; or (c) is
rightfully received by GCOR from a third party without a duty of
confidentiality; or (d) is disclosed by P&G to a third party without
duty of confidentiality on the third party; or (e) is independently
developed by GCOR; or (f) is disclosed under operation of law; or (g) is
disclosed by GCOR with P&G's prior written approval.
9. P&G warrants that it has the right to make the disclosures under this
Agreement, and all such disclosures are at its sole discretion.
10. Neither party acquires any intellectual property rights (including any
right to prepare or file patent applications in any jurisdiction) under
this Agreement; neither party has an obligation under this Agreement to
purchase any service or item from the other party, or to deal
exclusively with the other party in any field; and neither party has an
obligation under this Agreement to offer for sale products using or
incorporating the confidential information.
11. GCOR shall adhere to the U.S. Export Administration Laws and Regulations
and shall not export or re-export any technical data or products
received from P&G or the direct products of such technical data to any
proscribed country listed in the U.S. Export Administration Regulations
unless properly authorized by the U.S. Government.
12. The parties do not intend that any agency or partnership relationship be
created between them by this Agreement.
13. All additions or modifications to this agreement must be made in writing
and must be signed by both parties. This Agreement is made under and
shall be construed according to the laws of the State of Ohio.
Genencor International, Inc. The Procter & Gamble Company
Address: Address:
200 Meridian Centre Boulevard One Procter & Gamble Plaza
Rochester, New York 14618 Cincinnati, Ohio 45202
By: By:
--------------------------- ---------------------------
--------------------------- ---------------------------
Printed Name Printed Name
Title: Title:
------------------------ -------------------------
<PAGE> 18
ATTACHMENT 2.B
STANDARD PROCTER & GAMBLE / GENENCOR INTERNATIONAL, INC.
AGREEMENT ON PROVISION OF BIOLOGICAL MATERIAL
We appreciate the interest of The Procter & Gamble Company ("P&G") in
obtaining a sample of the Biological Material from Genencor
International, Inc. ("GCOR"). In order for GCOR to supply P&G with the
Biological Material P&G requested, we ask P&G to agree to the following
conditions. Please note agreement by your signature at the end of both
copies of the Letter Agreement, keep one copy, and return one to the
attention of the person from whom P&G requested the Biological Material
at the following address:
Genencor International, Inc.
925 Page Mill Road
Palo Alto, California 94304-1013
1. The following "Biological Material" will be supplied to P&G by GCOR in
reasonable research quantities (describe):
------------------------------------------------------------------------
------------------------------------------------------------------------
Any biological or chemical material or compound, directly or indirectly,
derived from the foregoing Biological Material supplied by GCOR, and any
medium in which such Biological Material is provided, is expressly
understood to be part of the "Biological Material" and is covered by the
conditions set forth in this Agreement, as are all documentation and
descriptions of the Biological Material.
2. The address or site at which the Biological Material will be used is
------------------------------------------------------------------------
3. The Biological Material will be used only for research purposes under
all suitable and necessary containment conditions and will not be used
on, in, or for human subjects.
4. a. The Biological Material will not be supplied to other
laboratories, either within or outside of P&G, nor to any other
individual or organization other than employees of the requesting
P&G Laboratory and will not be used, directly or indirectly, for
any Commercial Purpose unless agreed otherwise in writing by
GCOR. For purposes of this Agreement, Commercial Purpose shall
include the preparing or filing of any patent application in any
jurisdiction. Each person employed by P&G will be informed of the
terms and conditions of this Letter Agreement prior to allowing
such employee(s) to have access to Biological Material and P&G
agrees not to allow access or transfer the Biological Material to
any employee or other person unless such employee is bound by an
employment or confidentiality
<PAGE> 19
agreement or other agreement requiring assignment of all
inventions, patents and copyrights to P&G's Laboratory or
Organization.
b. The Biological Material may not be used, directly or indirectly,
in any "sponsored research" or other research programs if the
terms of such sponsorship or program would entitle the sponsor or
any third party to any rights or interests in such research or
its results, including the right to review and/or publish such
results.
5. a. The Biological Material will be used only as follows (describe):
b. P&G shall keep and maintain written records of all use of the
Biological Material and the individual(s) allowed access to such
Materials. GCOR shall have the right to review and copy such
records at any time.
c. P&G acknowledges that the Biological Material supplied hereunder
is obtained only for purposes stated herein and P&G obtains no
intellectual property or other rights in the Biological Material
supplied under this Agreement. P&G shall take all care necessary
to prevent disclosure of any information concerning the
Biological Material to any party who is not bound by the terms of
this Agreement.
6. P&G shall not analyze, attempt to analyze, or have analyzed the
composition or formulation of the Biological Material.
7. It is understood that P&G shall not publish or disclose outside of the
Laboratory or Organization the results of experiments using the
Biological Material, except with the prior written consent of GCOR,
which consent shall not be untimely or unreasonably withheld.
8. P&G agrees that prior to any approved publication or disclosure of
results or any use of the Biological Material, P&G or P&G co-workers
will promptly provide advance copies of such results to GCOR.
9. P&G agrees not to apply for any foreign or domestic patents, nor to seek
any copyright without the prior written consent of GCOR, with
appropriate terms and conditions to be negotiated in each case as a part
of any such prior written consent. If such patent or copyright should
issue, notwithstanding the sentence above, P&G grants to GCOR (i) an
irrevocable worldwide, paid-up, non-exclusive, royalty-free license
under any patents based on the Biological Material whether such patents
are granted in the name of the Laboratory or Organization, or any
employee who had access to the Biological Material together with the
right to sublicense and, (ii) an irrevocable paid-up, royalty-free,
perpetual license under any copyright which might be obtained for any
publication referring, directly or indirectly, to the Biological
Material.
<PAGE> 20
10. The Biological Material provided by GCOR should be considered
experimental and should be handled with appropriate safety precautions.
However, in cases where a Material Safety Data Sheet is available for
the Biological Material, it will be supplied and the handling
precautions contained therein should be followed. GCOR makes no
expressed or implied warranties of any kind with respect to the
Biological Material. P&G hereby indemnifies and holds GCOR harmless from
any and all liability and/or damages (including costs of defense)
resulting from the use of the Biological Material, including any use of
the Biological Material which they might permit or allow to third
parties.
11. Nothing contained in this Agreement shall be construed as granting a
license or other right to P&G under any proprietary rights of GCOR.
12. By executing this Agreement, the undersigned represent that they are
authorized on behalf of their respective organization to enter into this
Agreement and bind their organization.
Sincerely,
Genencor International, Inc.
Signature: ____________________________
Name: _________________________________
Title: ________________________________
Accepted and Agreed:
Individual Requester: ______________________________
and
The Procter & Gamble Company
Signature: _________________________________________
Date: ______________________________________________
