{"id":42032,"date":"2015-09-17T11:25:58","date_gmt":"2015-09-17T16:25:58","guid":{"rendered":"https:\/\/content.findlaw-admin.com\/ability-legal\/contracts\/uncategorized\/agreement-maxygen-inc-and-gist-brocades-bv.html"},"modified":"2015-09-17T11:25:58","modified_gmt":"2015-09-17T16:25:58","slug":"agreement-maxygen-inc-and-gist-brocades-bv","status":"publish","type":"corporate_contracts","link":"https:\/\/corporate.findlaw.com\/contracts\/operations\/agreement-maxygen-inc-and-gist-brocades-bv.html","title":{"rendered":"Agreement &#8211; Maxygen Inc. and Gist-Brocades BV"},"content":{"rendered":"<pre>                                   AGREEMENT\n\n     This Agreement is made and entered into on this 15th day of March, 1999\n('Effective Date'), by and between:\n\n     1.   MAXYGEN INC., a company incorporated under the laws of the State of\nDelaware and established at 3410 Central Expressway, Santa Clara, California,\n95051, United States of America ('Maxygen'), of the one part; and\n\n     2.   GIST-BROCADES B.V., a company incorporated under the laws of The\nNetherlands and established at Wateringseweg 1, 2611 XT Delft, The Netherlands\n('GB'), of the other part;\n\n     hereinafter sometimes individually referred to as 'Party' and collectively\nas 'Parties'.\n\n                                  WITNESSETH\n                                  ----------\n\n     WHEREAS, GB is interested in having carried out research into new enzyme\ncompositions; and\n\n     WHEREAS, Maxygen possesses know-how, expertise and facilities to perform\nthe aforementioned research.\n\n     NOW, THEREFORE, in consideration of the premises and of the mutual\ncovenants and conditions herein contained, the Parties hereto have agreed and do\nby these presents agree as follows:\n\n                           ARTICLE I. DEFINITIONS\n\n     In addition to the terms defined elsewhere in this Agreement the following\nterms shall, as used herein, have the following respective meanings:\n\n     (a)  'Affiliate', shall mean:\n\n          i)     any entity in which a Party to this Agreement, directly or\n                 indirectly:\n               \n                 -  owns at least half the capital or business assets;\n                 \n                 -  has the power to exercise at least half the voting rights;\n                    or\n                 \n                 -  has the power to appoint at least half the members of the\n                    supervisory board, board of directors or bodies legally\n                    representing the entity;\n\n* CERTAIN INFORMATION WITHIN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY\n  WITH THE SEC. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE\n  OMITTED PORTIONS.\n\n \n          ii)    entities which directly or indirectly have in or over a Party\n                 to this Agreement the rights or powers listed in (i); and\n\n          iii)   entities in which an entity referred to in (ii) directly or\n                 indirectly has the rights or powers listed in (i);\n\n     (b)  'Commencement Date', shall mean: the Effective Date;\n\n     (c)  'Cost Savings', shall mean: the cost savings in [*******] in the\nField, achieved by GB, a third party sublicensee appointed by GB or an Affiliate\nof GB, generated through the use of GB Products. The methodology for calculating\nGB's production costs in the Field prior to and after implementation of the\nResults is attached as Annex 1. This cost difference shall be the basis for\ncalculating the royalty due to Maxygen under Article 11. The Annex in addition\nprovides for a methodology for calculating cost differences in the event GB on\nits own account achieves any decrease in production costs in the Field after\nimplementation of the Research Results or Patent Rights;\n\n     (d)  'Field', shall mean: [*******];\n\n     (e)  'Force Majeure', shall mean: the event that either Party is\nprevented from or is unable to perform any of its obligations under this\nAgreement due to any act of God; fire; casualty; flood; war; strike; lockout;\nfailure of public utilities; injunction or any act, exercise, assertion or\nrequirement of governmental authority, including any governmental law, order, or\nregulation permanently or temporarily prohibiting or reducing the level of\nresearch and development work hereunder; epidemic; destruction of production\nfacilities; riots; insurrection; or any other cause beyond the reasonable\ncontrol of a Party;\n\n     (f)  'FTE', shall mean: the equivalent of one full year of work on a full\ntime basis by a scientist or other professional possessing skills and experience\nnecessary to carry out the Study by Maxygen, determined in accordance with\nMaxygen's normal policies and procedures. Maxygen's current standard FTE rate\nequals a total of [*******] hours per year. This rate is subject to reasonable\nfluctuations;\n\n     (g)  'GB Information', shall mean: any and all patented and non-patented\ndata, organisms, know-how, instructions, strains and other information in the\nfield of [*******], specifically (i) vectors and plasmids for expression in\n[*******], (ii) bioassays and HPLC methods, and (iii) information on the\nkinetics of [*******] owned or controlled by GB as of the Effective Date or\nacquired by GB thereafter, not being the Research Results or Patent Rights,\ndisclosed, either directly or indirectly, by GB to Maxygen;\n\n                                       2\n\n \n     (h)  'GB Know-How', shall mean: Know-How owned or controlled exclusively by\nGB;\n\n     (i)  'GB Patent Rights', shall mean: Patent Rights owned or controlled\nexclusively by GB;\n\n     (j)  'GB Products', shall mean: Targets for use in the Field;\n\n     (k)  'GB Research Results', shall mean: Research Results invented or\ndeveloped solely by GB;\n\n     (1)  'Joint Know-How', shall mean: Know-How owned or controlled by both\nMaxygen and GB;\n\n     (m)  'Joint Patent Rights', shall mean: Patent Rights owned or controlled\nby both Maxygen and GB;\n\n     (n)  'Joint Research Results', shall mean: Research Results invented or\ndeveloped jointly by Maxygen and GB;\n\n     (o)  'Know-How', shall mean: all non-patented Research Results which are\nowned or controlled, in whole or in part, by license, assignment or otherwise,\nby Maxygen and\/or GB during the term of this Agreement. It is understood that\nKnow-How does not include the Maxygen Technology, GB Information or inventions\nwithin the Patent Rights;\n\n     (p)  'Maxygen Know-How', shall mean Know-How owned or controlled\nexclusively by Maxygen;\n\n     (q)  'Maxygen Products', shall mean: Targets for all uses outside the\nField. Maxygen Products shall additionally include [*******];\n\n     (r)  'Maxygen Patent Rights', shall mean: Patent Rights owned or controlled\nexclusively by Maxygen;\n\n     (s)  'Maxygen Research Results', shall mean: Research Results invented or\ndeveloped solely by Maxygen;\n\n     (t)  'Maxygen Technology', shall mean: any and all patented and non-\npatented data, organisms, know-how, instructions, strains and other information\nin the field of Shuffling Technology, owned or controlled by Maxygen as of the\nEffective Date or acquired by Maxygen thereafter, not being the Research Results\nor Patent Rights, including without limitation the Maxygen patents listed in\nAnnex 2;\n\n                                       3\n\n \n     (u)   'Patent Rights', shall mean (i) all patents and patent applications\nclaiming inventions conceived and reduced to practice during the term of the\nStudy and derived from the Research Results, (ii) any divisions, continuations,\ncontinuations-in-part, reissues, reexaminations, extensions or other\ngovernmental actions which extend any of the subject matter of the patent\napplications or patents in (i) above, and (iii) any substitutions,\nconfirmations, registrations or revalidations of any of the foregoing, in each\ncase which are owned or controlled, in whole or in part, by license, assignment\nor otherwise by Maxygen and\/or GB during the term of this Agreement;\n\n     (v)   'Products', shall mean: GB Products and Maxygen Products;\n\n     (w)   'Protocol', shall mean: Annex 3, attached to and forming an integral\npart of this Agreement, said Annex containing provisions in respect of the\nStudy;\n\n     (x)   'Research Data', shall mean all data, inventions, improvements,\ndiscoveries, instructions, processes, formulas and other information (including,\nwithout limitation, chemical, physical and analytical, safety, manufacturing and\nquality control data and information) obtained, developed, conceived and reduced\nto practice, or created, discovered or derived in the course of the performance\nof the Study;\n\n     (y)   'Research Materials', shall mean: all tangible property, including\nwithout limitation, assays, invented, obtained, discovered, developed or\nderived, or the function or utility of which is discovered or determined, in the\ncourse of the performance of the Study;\n\n     (z)   'Research Results', shall mean: all Research Data and Research\nMaterials collectively, including the Know-How but excluding GB Information and\nMaxygen Technology;\n\n     (aa)  'Shuffle', 'Shuffled' and 'Shuffling', shall mean: the recombination\nand\/or rearrangement and\/or mutation of genetic material for the creation of\ngenetic diversity;\n\n     (bb)  'Shuffled Gene', shall mean: (i) any gene variant identified in\nthe Study using Maxygen Technology, and (ii) any and all modified forms of any\nsuch gene variants, and any fragments or derivatives or variants of the\npreceding, made by GB or its Affiliates;\n\n     (cc)  'Shuffling Technology', shall mean: techniques, methodologies,\nprocesses, materials and\/or instrumentation useful for Shuffling, and the\nscreening of resulting genetic material to identify potential usefulness;\n\n                                       4\n\n \n     (dd)  'Study', shall mean research on behalf of and for GB, into developing\nthe Targets utilizing the Maxygen Technology on genes provided by GB;\n\n     (ee)  'Study Management Committee', shall mean a committee to oversee the\nStudy, sometimes referred to as the 'Research Management Committee';\n\n     (ff)  'Targets', shall mean: the following specific enzyme compositions\nencoded by Shuffled Genes developed in the Study:\n\n           -  [*******];\n\n           -  [*******];\n\n           -  additional enzymes to be provided by GB involved in the [*******].\n              These additional enzymes shall only be deemed to be part of the\n              Study if and when, to be decided by the Study Management\n              Committee, the development of the above mentioned two (2) enzymes\n              does not fully occupy the time and\/or costs allocated under this\n              Agreement to Maxygen and the Study Management Committee agrees to\n              make such enzymes part of the Study.\n\n                               ARTICLE II. STUDY\n\n     2.1  As of the Commencement Date, Maxygen shall ensure that the Study will\nbe carried out in accordance with the Protocol, such that the same will be\ncompleted within a period of three (3) consecutive years or such longer period\nas mutually agreed upon by the Parties (the 'Study Term').\n\n     2.2  The Parties shall, through the Study Management Committee, review the\nStudy one and a half (1.5) years after the Commencement Date. If at such moment\nin time the progress of the Study is not deemed to be successful, the Parties\nshall discuss reorienting the Study for the remaining term of the Study.\n\n     2.3  Should the Research Results at any time give rise to a mutual wish to\nexpand the Study or should the Parties wish to extend the duration of the Study\nafter completion thereof, the Parties shall discuss on the terms and conditions\ntherefor and decide on any expansion or extension of the Study.\n\n                     ARTICLE III. CONTRIBUTION BY MAXYGEN\n\n     3.1  Maxygen shall have the Study performed under the responsibility and\nscientific supervision of Dr. [*******] or such other senior scientific employee\nof Maxygen that is reasonably satisfactory to GB.\n\n                                       5\n\n \n     3.2  Maxygen shall have the Study performed by [*******] FTE's per year,\nconsisting of scientists having training and experience relevant to the Study.\nThese scientists shall be reasonably approved by the Study Management Committee.\n\n     3.3  Maxygen shall furnish suitable equipment and the know-how of its\nscientific staff for the work to be performed in connection with the Study,\nprovided, however, that Maxygen shall be under no obligation to purchase\nequipment for the Study and Maxygen herewith declares to avail at present of all\nequipment necessary to perform the Study.\n\n                        ARTICLE IV. CONTRIBUTION BY GB\n\n     4.1  GB shall test those mutants resulting from the work performed by\nMaxygen under this Agreement which pass both the primary and the secondary\nscreening as described in the Protocol, and provide Maxygen with a written\nreport on the Research Results obtained within the period of time as stated in\nthe Protocol.\n\n     4.2  GB shall provide Maxygen with the know-how of its scientific staff\nconnected with the work to be performed under this Agreement, as required by\nMaxygen to proceed with the Study, and shall furnish Maxygen assistance insofar\nas necessary for the performance of the Study.\n\n     4.3  GB shall provide Maxygen with the necessary genes as required by\nMaxygen to conduct the Study. These materials remain the property of GB, shall\nnot be supplied to third parties and shall he used by Maxygen solely for the\npurposes of this Agreement.\n\n                         ARTICLE V. PRICE AND PAYMENT\n\n     5.1  In consideration of Maxygen's services rendered under this Agreement,\nGB shall pay a total amount of [*******], being [*******] per year. Said latter\namount is based upon GB's support of [*******] FTE scientists per year, each FTE\nto cost [*******] per year. The aforementioned amounts shall include any and all\ncosts, overhead and any and all applicable taxes.\n\n     5.2  GB shall pay the fee referred to in Article 5.1 at the rate of\n[*******] in advance of each calender quarter the Study is being performed.\nHowever, the last aforedescribed quarterly payment shall not be paid in advance\nbut upon receipt of the final report referred to in Article 7.2.\n\n          Maxygen shall send invoices for the attention of the GB Study leader,\nbeing Mr. [*******] or his replacement, one (1) month in advance of each\npayment, each invoice to mention the GB internal payment number, which for 1999\nis [*******]. GB \n\n                                       6\n\n \nshall timely provide the [*******] for the following years of the Study. Payment\nshall be made by GB within thirty (30) days upon receipt of the relevant invoice\nby banktransfer in accordance with the following wire instructions:\n\n               Bank of America\n               Palo Alto Commercial Bldg. #1493\n               530 Lytton Avenue\n               Palo Alto, CA 94301\n               Bank Operating Account: Maxygen, Inc.\n               Contact Bank Person: Loretta Greco\n               Telephone: 1-650-8534683\n               Account Number: [*******]\n               Routing Transit Number: [*******]\n\n                    ARTICLE VI. STUDY MANAGEMENT COMMITTEE\n\n     6.1  Promptly following the Commencement Date, the Parties shall establish\nthe Study Management Committee (SMC). The SMC shall have the responsibility for\nmonitoring the progress of the Study, establishing milestones, facilitating the\ntransfer of GB Information, Maxygen Technology and Research Results, approving\nthe reports written by Maxygen and GB as described in this Agreement, approving\napplications for Patent Rights, amending the Protocol, approving the scientists\nperforming the Study, adjusting the allocation of effort on work undertaken in\nthe Study as necessary, and all other issues that arise between the Parties.\n\n     6.2  The SMC shall comprise two (2) members for Maxygen and two (2) members\nfor GB, each member to have appropriate knowledge and ongoing familiarity with\nthe Study. The SMC shall meet within forty-five (45) days or within a longer\nperiod of time mutually agreed upon after every report provided by Maxygen to GB\nunder Articles 7.1 and 7.2, alternatively at Maxygen's and GB's address or any\nother mutually agreed upon place, and at such specific times as shall be\nmutually agreed upon by the Parties. Each Party shall pay its own travel costs.\nThe meetings of the SMC may be held by telephone if agreed by the members. The\nSMC shall act by unanimous vote. In the event however that the GB and Maxygen\nmembers cannot resolve an issue, the issue shall be submitted to the Manager\n[*******] of GB and the CEO of Maxygen for resolution. If resolution is not\nachieved, Article 25 shall apply. For each meeting of the SMC a secretary shall\nbe appointed, alternatively a Maxygen and GB member of the SMC. The secretary\nshall provide within two (2) weeks of every meeting of the SMC draft minutes of\nthe meeting to the other members of the SMC, which minutes shall be deemed\napproved by the SMC if no comments have been received thereon within two (2)\nweeks.\n\n                                       7\n\n \n                      ARTICLE VII. REPORTING REQUIREMENT\n\n     7.1  Every six (6) months a progress report shall be written under the\nsupervision of Maxygen and shall be submitted to GB.\n\n     7.2  Maxygen shall present to GB the detailed Maxygen Research Results in a\nfinal report written by Maxygen, said report to be completed within three (3)\nmonths of the completion of the Study. Notwithstanding the above, Maxygen has no\nobligation to disclose detailed Shuffling methodology.\n\n     7.3  Without prejudice to the above, Maxygen shall have its key scientists\nperforming the Study meet with representatives of GB in order for such persons\nto inform themselves on the progress being made with Maxygen's activities to be\nperformed under this Agreement and the status of the same unless this would\nconflict with a pre-arranged visit by another client. Said meetings shall be\nmade subject to at least five (5) business days notice and shall occur not more\nthan once in any reporting period.\n\n     7.4  GB shall have the right to have a certified public accountant\nreasonably acceptable to Maxygen audit Maxygen's time reporting system to verify\nif Maxygen has applied the agreed upon number of FTEs to the Study. If this\naudit reveals inaccuracies, Maxygen agrees to correct the situation and make up\nthe difference.\n \n                            ARTICLE VIII. SECRECY\n\n     8.1  Maxygen shall maintain the secrecy of the GB Information and GB shall\nmaintain the secrecy of the Maxygen Technology. The receiving Party shall not\ndisclose the same to any persons other than those of its employees or\nconsultants necessarily involved in the Study. Maxygen and GB shall obtain\nundertakings from all such persons they provide the GB Information, respectively\nMaxygen Technology to, prior to his or her receipt of such G3 Information or\nMaxygen Technology, to maintain the secrecy thereof and not to use the same in\nany way or at any time except as provided for in Sections 8.2 and 6.3 and to\nconduct the Study.\n\n          In addition, Maxygen and GB shall maintain the secrecy of the Research\nResults and the Patent Rights and shall not disclose the same to any persons\nother than those of their\n\n          -    employees or consultants necessarily involved in the Study; and\n\n          -    Affiliates or sublicensees as necessary for the purpose of this\n               Agreement.\n\nThe Party providing the Research Results and the Patent Rights will obtain from\neach such person, prior to his or her receipt of the Research Results and the\nPatent Rights, \n\n                                       8\n\n \nundertakings to maintain the secrecy thereof and not to use the same in any way\nor at any time except as provided for in Sections 8.2 and 8.3.\n\n     8.2  The obligations contained in Section 8.1 shall not apply to GB\nInformation, Maxygen Technology, Research Results or Patent Rights which:\n\n          (a)  the receiving Party can establish by competent proof was\/were in\nits lawful possession at the time of disclosure thereof by the disclosing Party\nand was\/were not acquired, directly or indirectly, from the disclosing Party;\n\n          (b)  was\/were known to the public or generally available to the public\nprior to the date of disclosure thereof by the disclosing Party to the receiving\nParty;\n          (c)  become(s) known to the public or generally available to the\npublic subsequent to the date of disclosure thereof by the disclosing Party to\nthe receiving Party through no breach of this Agreement, nor any act or failure\nto act on the part of the receiving Party; or\n\n          (d)  is\/are disclosed or made available to the receiving Party at any\ntime by a third party who did not acquire such GB Information or Maxygen\nTechnology, directly or indirectly, from the disclosing Party.\n\n     8.3  The obligations set forth under Section 8.1 shall, furthermore, not\napply to:\n\n          -    GB Information, Maxygen Technology, the Research Results or the\n               Patent Rights which a Party is required to disclose in\n               prosecuting or defending litigation, to comply with applicable\n               regulations or for conducting clinical trials, provided that the\n               disclosing Party shall have given its prior written consent\n               thereto, said consent not to be unreasonably withheld or delayed;\n               and\n\n          -    Research Results published or disclosed according to the\n               following procedure. A Party wishing to publish or otherwise\n               publicly disclose its Research Results shall first submit a draft\n               of the proposed manuscript to the Study Management Committee for\n               review by the other Party at least sixty (60) days prior to any\n               submission for publication or other public disclosure. To avoid\n               loss of patent rights as a result of premature public disclosure\n               of patentable information, the reviewing Party shall notify the\n               submitting Party in writing within thirty (30) days after receipt\n               of such proposed disclosure whether the reviewing Party desires\n               that a patent application be filed on any invention disclosed in\n               such proposed disclosure. In the event that the reviewing Party\n               desires such filing, the submitting Party\n\n                                       9\n\n \n               shall withhold publication or disclosure of such proposed\n               disclosure until the earlier of (i) the date a patent application\n               is filed thereon, or (ii) the date the Parties determine after\n               consultation that no patentable invention exists, or (iii) sixty\n               (60) days after receipt by the submitting Party of the reviewing\n               Party's written notice of the reviewing Party's desire to file\n               such patent application. Further, if the proposed disclosure\n               contains information that the reviewing Party reasonably deems as\n               likely to be harmful to its commercial interests, the submitting\n               Party agrees to remove such information upon request of the\n               reviewing Party.\n\n         ARTICLE IX. OWNERSHIP OF RESEARCH RESULTS AND PATENT RIGHTS\n\n     9.1  Maxygen shall have the sole and exclusive ownership of all right,\ntitle and interest on a worldwide basis in and to any Maxygen Research Results\nand Maxygen Patent Rights.\n\n          GB shall have the sole and exclusive ownership of all right, title and\ninterest on a worldwide basis in and to any GB Research Results and GB Patent\nRights.\n          Maxygen and GB shall jointly own all Joint Research Results and Joint\nPatent Rights.\n\n     9.2  Notwithstanding Article 9.1, Maxygen agrees to assign, and hereby\nassigns, to GB all right, title and interest in [*******].\n\n          Notwithstanding Article 9.1, GB agrees to assign, and hereby assigns,\nto Maxygen all right, title and interest in [*******].\n\n          Maxygen and GB agree to execute such documents as are necessary to\nresult in (i) Maxygen's exclusive ownership of [*******], and (ii) GB's\nexclusive ownership of [*******].\n\n     9.3  For the sake of clarity, it is understood by the Parties that Maxygen\nshall retain all right, title and interest in and to the Maxygen Technology and\nGB shall retain all right, title and interest in and to the GB Information.\n\n     9.4  In respect of the Research Results owned by the Parties, each Party\nshall have the exclusive right to file for worldwide Patent Rights for its\nResearch Results and to enforce those Patent Rights. Rights to file for and to\nenforce Patent Rights to Research Results shall be in accordance with the\nassignments of Research Results as stated in Article 9.2. Inventorship of\npatentable inventions shall be determined in accordance with the standards\nembodied in United States patent law. The Parties agree that, \n\n                                       10\n\n \nnotwithstanding such inventorship, rights to Research Results and Patent Rights,\nas between the Parties, shall be determined as set forth in this Agreement. The\nParty prosecuting Patent Rights shall incur all expenses associated therewith\nand all costs of defending any of the said rights and shall be entitled to\nretain all monetary recoveries related thereto.\n\n          The Party responsible for filing for Patent Rights shall use\nreasonable efforts to obtain patent coverage that is as broad as possible to\ncover all potential commercial applications thereof, and shall assure that the\nother Party will have the opportunity to provide meaningful and substantive\nreview and comment with respect thereto. Each Party shall be kept informed of\nall substantive matters relating to the preparation and prosecution of all\npatent applications on the Research Results and shall be provided with copies of\nall patent prosecution and maintenance documentation and correspondence so that\nthe other Party shall be currently and promptly informed of the continuing\nprosecution and maintenance of the Patent Rights. Each Party shall have the\nright to review and comment upon such documentation and correspondence, as well\nas all specifications, claims and responses to office actions prior to their\nsubmission to the relevant government patent office.\n\n          Further, each Party shall fully cooperate with and assist the other as\nreasonably requested in enforcing and defending Patent Rights.\n\n          At the request of either Party, the Study Management Committee shall\nreasonably consider a recommendation that, for commercial reasons, there be no\nfiling for Patent Rights on Research Results.\n \n                    ARTICLE X.  LICENSES FOR MAXYGEN AND GB\n\n     10.1  GB herewith grants to Maxygen (i) a non-exclusive, nontransferable,\nnonsublicensable, royalty-free, worldwide license under GB's interest in the\nResearch Results and Patent Rights, and (ii) a non-exclusive, nontransferable,\nnonsublicensable, royalty-free, worldwide license under the GB Information\nnecessary for the conduct of the Study, in each case solely to conduct the\nStudy.\n\n     10.2  GB herewith grants Maxygen a worldwide, royalty-free exclusive\nlicense under GB's interest in the Research Results and Patent Rights to make,\nhave made, use, have used, sell, have sold, import, have imported, export and\nhave exported the Maxygen Products and Shuffled Genes encoding Maxygen Products.\nShould GB indicate its wish to use the Research Results and\/or Patent Rights for\nmaking, using or selling Maxygen Products, the Parties shall in good faith\nnegotiate on the terms and conditions for such GB use.\n\n                                       11\n\n \n     10.3  Maxygen herewith grants to GB a non-exclusive, nontransferable,\nnonsublicensable, royalty-free, worldwide license under (i) Maxygen's interest\nin the Research Results and Patent Rights, and (ii) any assay technology owned\nor controlled by Maxygen determined by the Study Management Committee as\nnecessary for the performance by GB of its activities in the Study, in each case\nsolely to conduct the Study.\n\n     10.4  Maxygen herewith grants GB a worldwide exclusive license under\nMaxygen's interest in the Research Results and Patent Rights to make, have made,\nuse, have used, sell, have sold, import, have imported, export and have exported\nthe GB Products and Shuffled Genes encoding GB Products. This license shall be\nroyalty-bearing in accordance with Article 11. This license shall be\nnonsublicensable without Maxygen's prior written consent, which shall not be\nunreasonably withheld, [*******]\n\n     10.5  In furtherance of the license granted to GB in Article 10.4, Maxygen\nagrees that, to the extent necessary for GB to practice the license granted in\nArticle 10.4, for so long as GB is not in default with respect to any payment\ndue to Maxygen hereunder, Maxygen shall not bring any claim or action against\nGB, its Affiliates, licensees, agents or customers based on or asserting that\nthe manufacture, use, sale, offer for sale, import or export of a GB Product in\naccordance with the license set forth in Article 10.4 violates or infringes\n[*******].\n\n     10.6  In the event GB wishes to discontinue any of its Patent Rights, GB\nshall promptly inform Maxygen thereof in writing. Maxygen may within four (4)\nweeks indicate in writing its interest in such Patent Right in which case the\nsame shall be transferred to Maxygen at no cost.\n\n          In the event Maxygen wishes to discontinue any of its Patent Rights,\nMaxygen shall promptly inform GB thereof in writing. GE may within four (4)\nweeks indicate in writing its interest in such Patent Right in which case the\nsame shall be transferred to GB at no cost.\n \n                            ARTICLE XI.  ROYALTIES\n\n     11.1  Following the first commercial use of a GB Product by GB, a third\nparty sublicensee appointed by GB or an Affiliate of GB, GB shall compile\nrecords of the Cost Savings in accordance with Article 11.2 and shall pay to\nMaxygen a royalty of [*******] percent [*******] of the Cost Savings per year\nduring the term of this Agreement as indicated in Article 26.1.\n\n           In the event that GB or a GB Affiliate receives any payments,\nincluding without limitation up-front fees, royalties, milestones and rebates,\nfrom a GB Affiliate or a third party sublicensee appointed by GB or an Affiliate\nof GB, related to the use, manufacture or sale of a GB Product or a Shuffled\nGene encoding a GB Product, \n\n                                       12\n\n \nMaxygen shall in addition to any royalties due to it pursuant to the previous\nparagraph of this Article 11.1, be entitled to receive [*******] percent\n[*******] of such payments. Maxygen shall be entitled to an accounting of all\nsuch payments in accordance with Articles 11.2 and 11.3.\n\n     11.2   Within sixty (60) days after the end of each six (6) calendar month\nperiod during the term of the Agreement, GB shall render a written report to\nMaxygen setting forth for the preceding six (6) calendar months a calculation of\nthe Cost Savings and a calculation of the royalty payments due for those six (6)\nmonths.\n\n          Unless otherwise set forth elsewhere in this Agreement, all royalties\nand payments due to Maxygen under this Agreement shall be computed on a six (6)\nmonthly basis as set forth above and shall be submitted with the report required\nin this Article 11.2. Maxygen shall treat these reports as confidential as\nprovided under Article 8, whether or not they are marked as such.\n\n     11.3   GB will keep and maintain complete and accurate books and records as\nare required accurately to determine the baseline variable costs as identified\nin paragraph 4 of Annex 1 and royalties payable to Maxygen for two (2) years\nfollowing the date on which such royalties were paid or reported. Maxygen shall\nhave the right, at its own expense and through a certified public accountant\nreasonably acceptable to GB, to examine such books and records during regular\nbusiness hours during the life of this Agreement and for two (2) years after its\ntermination; provided, however, that the accountant shall report to Maxygen only\nas to the amount of Cost Savings and the accuracy of the royalty statements and\npayments. If such examination reveals an underpayment, then GB shall promptly\nmake up such underpayment and if such underpayment is more than five percent\n(5%) of the amount due, GB shall also reimburse Maxygen for the reasonable costs\nof such examination.\n\n     11.4   All payments hereunder shall be made by bank transfer into the bank\naccount stated in Article 5.2. Where required to do so by applicable law or\ntreaty, GB  shall withhold taxes required to be paid to a taxing authority on\naccount of such income to Maxygen, and GB shall furnish Maxygen with\nsatisfactory evidence of such withholding and payment in order to permit Maxygen\nto obtain a tax credit or other relief as may be available under the applicable\nlaw or treaty. GB shall cooperate with Maxygen in obtaining exemption from\nwithholding taxes where available under applicable laws and treaties.\n\n     11.5   All payments shall be in United States Dollars and shall be made on\nthe dates set forth herein. All late payments shall bear interest at a rate to\nbe determined according to the LIBOR one (1) year rate valid on the date late\npayment commences. The monies due to Maxygen calculated hereunder shall first be\ndetermined in the currency of \n\n                                       13\n\n \nthe country where GB, its licensees, Affiliates or third parties appointed by GB\nhave achieved the Cost Savings and then converted into its equivalent United\nStates Dollars at the average monthly conversion rate for such foreign currency\nbased on the conversion rates as published in The Wall Street Journal for the\n                                              -----------------------\nlast month of the accounting period in a report made under Article 11.2.\n \n                   ARTICLE XII.  EXCLUSIVITY; DUE DILIGENCE\n\n     12.1  Maxygen agrees that during the Study Term it will not perform for or\notherwise collaborate in research programs with third parties in the Field.\nMaxygen will give GB notice and a reasonable opportunity to negotiate rights to\nexpand the Field during the Study Term to potentially include [*******]. In such\nevent, if GB and Maxygen agree on terms, the Field shall include those\nadditional compounds covered by such agreement.\n\n     12.2  GB shall actively pursue commercialization of each Shuffled Gene as\ndescribed in Annex 1 and 3 and with commercially reasonable diligence at the\nsame level of effort it makes with its own intellectual property of comparable\npotential, stage or development and patent protection. Such efforts shall\ninclude the commercialization of a GB Product within [*******] of delivery of a\nShuffled Gene, said period to be extended if GB indicates a justifiable reason.\nDiligence with respect to a particular Shuffled Gene or GB Product shall be\nconsidered diligence with respect to all other Shuffled Genes or GB Products\nwhich resulted from Shuffling of the same starting gene provided that such GB\nProduct of the gene catalyses the same reaction of compounds in the Field.\n\n     12.3  If GB fails to satisfy the diligence obligations in Article 12.2 with\nrespect to a Shuffled Gene or GB Product or discontinues the commercial sale of\nany GB Product prior to the termination of this Agreement, the rights and\nlicenses granted GB in this Agreement with respect to the applicable Shuffled\nGene or GB Product shall terminate and such rights shall revert to Maxygen.\nHowever, in the event more than one (1) GB Product is derived from the same\nShuffled Gene, and the commercial sale of other GB Products are continued, only\nthe rights with respect to the discontinued GB Product shall revert to Maxygen.\n\n     12.4  GB shall keep Maxygen apprised of the status of the development and\ncommercialization of each Shuffled Gene or GB Product by providing Maxygen\nduring the term of this Agreement with a written report within thirty (30) days\nafter the end of each six (6) month period detailing such activities with\nrespect to each applicable Shuffled Gene or GB Product. These reports shall\ncontain sufficient information to allow Maxygen to monitor GB's compliance with\nthis Agreement. In addition, Maxygen shall have access rights, at its own\nexpense and through two (2) mutually recognized independent scientific experts\nreasonably acceptable to GB, to all pertinent data generated \n\n                                       14\n\n \nby or on behalf of GB with respect to the development of Shuffled Genes or GB\nProducts, during regular business hours during the life of this Agreement,\nprovided, however, that the scientific experts shall report to Maxygen only as\nto the accuracy and sufficiency of the GB reports referred to above. Maxygen\nshall treat these reports and information as confidential as provided under\nArticle 8, whether or not they are marked as such.\n\n     12.5  [*******].\n \n                           ARTICLE XIII.  PUBLICITY\n\n     Neither Party shall use the name of the other, its direct or indirect\nAffiliates or of any member of its staff, in any publication, news release or\nother public announcement without the prior written approval of an authorized\nrepresentative of such Party, except as may be required by applicable law or\nregulation.\n \n                     ARTICLE XIV.  INDEPENDENT CONTRACTOR\n\n     In the performance of all obligations under this Agreement:\n\n     (a)  Maxygen shall be deemed to be and shall be an independent contractor,\nand as such, Maxygen shall not be entitled to any benefits applicable to\nemployees of GB;\n\n     (b)  Neither Party is authorized or empowered to act as agent for the other\nfor any purpose and shall not on behalf of the other enter into any contract,\nwarranty or representation as to any matter. Neither Party shall be bound by the\nacts or conduct of the other Party.\n \n              ARTICLE XV.  GUARANTEES; LIABILITY; INDEMNIFICATION\n\n     15.1  To Maxygen's knowledge Maxygen Technology does not infringe on any\nvalid claim of an issued patent held by a third party. Maxygen will be\nresponsible for securing any licenses needed to [*******] in the conduct of the\nStudy. GB will be responsible for securing any licenses needed for [*******] in\nthe conduct of the Study.\n\n     15.2  The Parties acknowledge that the research activities contemplated\nhereunder are experimental, and that the Study may not be successful. EXCEPT AS\nOTHERWISE EXPRESSLY PROVIDED IN THIS AGREEMENT, NEITHER PARTY MAKES ANY\nREPRESENTATION AND EXTENDS NO WARRANTY OF ANY KIND WITH RESPECT TO ANY\nCONFIDENTIAL INFORMATION, PATENT RIGHTS, KNOW-HOW, SHUFFLING TECHNOLOGY,\nSHUFFLED GENES, PRODUCTS OR OTHER TECHNOLOGY, GOODS, SERVICES, RIGHTS OR OTHER\nSUBJECT MATTER OF THIS AGREEMENT AND HEREBY DISCLAIMS WARRANTIES OF\nMERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, NONINFRINGEMENT AND VALIDITY\nOF TECHNOLOGY OR \n\n                                       15\n\n \nPATENT CLAIMS, ISSUED OR PENDING, WITH RESPECT TO ANY AND ALL OF THE FOREGOING.\n\n     15.3  EXCEPT AS EXPRESSLY PROVIDED HEREIN, NEITHER MAXYGEN NOR GB WILL BE\nLIABLE TO THE OTHER WITH RESPECT TO ANY SUBJECT MATTER OF THIS AGREEMENT UNDER\nANY CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER LEGAL OR EQUITABLE THEORY\nFOR (i) ANY INDIRECT, INCIDENTAL, CONSEQUENTIAL OR PUNITIVE DAMAGES OR LOST\nPROFITS OR (ii) COST OF PROCUREMENT OF SUBSTITUTE GOODS, TECHNOLOGY OR SERVICES.\n\n     15.4  Except as expressly provided herein, GB shall indemnify, defend and\nhold harmless Maxygen, its Affiliates and their respective directors, officers,\nemployees and agents and their respective successors, heirs and assigns (the\n'Maxygen Indemnitees') , against any and all liability, damage, loss or expense\n(including reasonable attorneys' fees and expenses of litigation) incurred by or\nimposed upon the Maxygen Indemnitees, or any of them, in connection with any\nclaims, suits, actions, demands or judgments of third parties, including without\nlimitation the infringement of intellectual property rights of a third party,\npersonal injury and product liability matters (except to the extent such claims,\nsuits, actions, demands or judgments result from a wilful material breach of\nthis Agreement, gross negligence or wilful misconduct on the part of a Maxygen\nIndemnitee) arising directly out of or in connection with or directly caused by\n(i) any actions of GB in the performance of the Study as described in Article\n4.1, (ii) the use, development outside the Study, testing, production,\nmanufacture, promotion, import, export or sale of any GB Product by GB or by an\nAffiliate, third party licensee, sublicensee, distributor or agent of GB, (iii)\nthe use by any person of any GB Product manufactured or sold by GB or by an\nAffiliate, third party licensee, sublicensee, distributor or agent of GB, or\n(iv) the use by Maxygen or GB of any gene or GB Information in the conduct of\nthe Study.\n\n     15.5  Except as expressly provided herein, Maxygen shall indemnify, defend\nand hold harmless GB, its Affiliates and their respective directors, officers,\nemployees and agents and their respective successors, heirs and assigns (the 'GB\nIndemnitees') , against any and all liability, damage, loss or expense\n(including reasonable attorneys' fees and expenses of litigation) incurred by or\nimposed upon the GB Indemnitees, or any of them, in connection with any claims,\nsuits, actions, demands or judgments of third parties, including without\nlimitation personal injury and product liability matters (except to the extent\nsuch claims, suits, actions, demands or judgments result from a wilful material\nbreach of this Agreement, gross negligence or wilful misconduct on the part of a\nGB Indemnitee) arising directly out of or in connection with or directly caused\nby (i) any actions of Maxygen in the performance of the Study, (ii) the use,\ndevelopment outside the Study, testing, production, manufacture, promotion,\nimport, export or sale of any Maxygen Product by Maxygen or by an Affiliate,\nthird party licensee, sublicensee, \n\n                                       16\n\n \ndistributor or agent of Maxygen or (iii) the use by any person of any Maxygen\nProduct manufactured or sold by Maxygen or by an Affiliate, third party\nlicensee, sublicensee, distributor or agent of Maxygen; provided, however, that\nnotwithstanding anything to the contrary the foregoing indemnity obligation\nshall expressly exclude any and all liability, damage, loss or expense incurred\nby a GB Indemnitee in connection with any claims, suits, actions, demands or\njudgments relating to [*******]. In addition, Maxygen shall indemnify, defend\nand hold harmless GB Indemnitees against any and all liability, damage, loss or\nexpense (including reasonable attorneys' fees and expenses of litigation)\nincurred by or imposed upon the GB Indemnitees, or any of them, in connection\nwith any claims, suits, actions, demands or judgments of third parties (except\nto the extent such claims, suits, actions, demands or judgments result from a\nwilful material breach of this Agreement, gross negligence or wilful misconduct\non the part of a GB Indemnitee) arising directly out of or in connection with\n[*******].\n \n                          ARTICLE XVI.  FORCE MAJEURE\n\n     16.1  Any obligation of either Party under this Agreement shall be\nsuspended for as long as and to the extent that the performance of such\nobligation is prevented by any Force Majeure situation.\n\n     16.2  The Party whose performance is thus suspended shall, however, use all\nreasonable efforts to resume performance of the obligations under this Agreement\nand after the Force Majeure situation shall have ceased, to accelerate the\nprogress of the work affected by that Force Majeure.\n\n                           ARTICLE XVII.  ASSIGNMENT\n                                        \n     The benefit or burden of this Agreement may not be assigned by either Party\nwithout the prior written consent of the other Party hereto, which consent shall\nnot be unreasonably withheld.\n\n                       ARTICLE XVIII.  FORCE AND EFFECT\n                                        \n     The Parties undertake and agree to do all things and to sign all documents\nthat may be necessary in order to give full force and effect to the reasonable\nintention of the present Agreement.\n\n                          ARTICLE XIX.  SEVERABILITY\n                                        \n     The Parties agree that no provision of this Agreement which may be deemed\nunenforceable shall in any way invalidate any other provision of this Agreement,\nall of which shall remain in full force and effect.\n\n                                       17\n\n \n                         ARTICLE XX.  ENTIRE AGREEMENT\n                                        \n     This Agreement contains the entire Agreement between the Parties and may\nnot be altered, amended, modified, or otherwise changed except by the consent in\nwriting of both Parties.\n\n                     ARTICLE XXI.  SUCCESSORS AND ASSIGNS\n                                        \n     This Agreement shall inure to the benefit of and be binding upon the\nrespective Parties hereto and their respective heirs, executors, administrators,\nsuccessors and\/or permitted assigns.\n\n                       ARTICLE XXII.  PARAGRAPH HEADINGS\n                                        \n     The paragraph headings in this Agreement have been incorporated for the\nsole purpose of more convenient reference but not for any interpretation of the\nclauses to which they refer.\n\n                            ARTICLE XXIII.  WAIVERS\n                                        \n     The failure of either Party hereto at any time to take action against the\nother Party for breach of its obligations hereunder or the failure of either\nParty to terminate this Agreement for cause as herein provided for, shall not\naffect either Party's right to require full compliance with the terms of this\nAgreement at any time thereafter, and the waiver by either Party of a breach of\nany provision of this Agreement shall not constitute a waiver of any subsequent\nbreach thereof nor nullify the effectiveness of such provision nor the right of\nsuch Party to demand redress for its respective losses, damages and claims.\n\n                            ARTICLE XXIV.  NOTICES\n                                        \n     All notices shall be in writing mailed via certified mail, return receipt\nrequested, overnight express mail, courier providing evidence of delivery, or by\ntelefax with the original copy sent via certified mail, return receipt\nrequested, addressed as follows, or to such other address as may be designated\nby notice so given from time to time:\n\n          If to GS:       Gist-Brocades B.V.\n                          Wateringseweg 1\n                          2611 XT Delft\n                          The Netherlands\n                          Attention: Legal Counsel [*******]\n                          with a copy to the Manager\n                          Technology [*******]\n\n          If to Maxygen:  Maxygen, Inc.\n\n                                       18\n\n \n                      3410 Central Expressway\n                      Santa Clara, California 95051\n                      United States of America\n                      Attention: Chief Executive Officer\n\n     Notices shall be deemed given as of the date received.\n\n \n\n                     ARTICLE XXV.  SETTLEMENT OF DISPUTES\n\n     25.1  Any disputes arising in connection with or deriving from the present\nAgreement, which cannot be settled in an amicable way, shall be finally settled\nby Arbitration under the Rules of the International Chamber of Commerce by one\nor more Arbitrators appointed in accordance with the said Rules.\n\n         The Arbitration shall take place in the place of domicile of the Party\nsued.\n\n     25.2  This Agreement is subject to the Laws of the State of California.\n\n \n\n                      ARTICLE XXVI.  TERM AND TERMINATION\n\n     26.1  This Agreement shall be effective as from the Commencement Date and\nwill remain in force for the longer of the following events: [*******] years as\nof the first commercial use by GB, a third party sublicensee appointed by GB or\nan Affiliate of GB, of a GB Product, or the life of the last-to-expire valid\nclaim in the patents listed as Maxygen Technology.\n\n     26.2  Without prejudice to the above, the Agreement may be terminated by\nwritten notice on any of the following events:\n\n          (a) by either Party in the event of the liquidation or receivership of\nthe other Party or in the event of suspension of payment if an administrator is\nappointed at the other Party; or\n\n          (b) by either Party in the event of a material breach by the other\nParty of any of its obligations hereunder which, if it can be remedied, remains\nunremedied on the expiry of ninety (90) days after receipt by the Party in\nbreach of written notice from the other Party specifying the breach and the\naction required to remedy the same.\n\n     26.3  The following provisions shall survive the expiration or termination\nof this Agreement for any reason: Articles 4.3, 8, 9, 11.2, 11.3, 13, 15, 17,\n21, 25 and 26. Upon the expiration of this Agreement pursuant to Article 26.1,\nthe licenses as granted under Articles 10.2 and 10.4 shall remain in force with\nthe proviso that such licenses shall be fully paid-up and non-exclusive.\n\n                                       19\n\n \n     26.4  Expiration or termination of this Agreement shall not affect the\nrights of either Party against the other in respect of the period up to date of\ntermination.\n\n \n\n     IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be\nexecuted in duplicate by their respective duly authorized representatives as of\nthe date first written above.\n\n \n\nMAXYGEN INC.                                 GIST BROCADES B.V.\n \n \nBy:  \/s\/ Russell Howard                      By:  \/s\/\n   ----------------------------------           -----------------------------\n \nBy:                                          By:  \/s\/\n   ----------------------------------           -----------------------------\n\n                                       20\n\n \n                                    Annex 1\n\n                                   [*******]\n\n[Annex 1 details the Cost Savings Calculation and Commercialization Procedure \nused for determining royalties under this Agreement.]\n\n \n                                    Annex 2\n\n                                   [*******]\n\n[Annex 2 identifies Maxygen Patents and Applications that are licensed to \nGB under this Agreement.]\n\n\n \n                                    Annex 3\n\n                                   [*******]\n\n[Annex 3 details the specific research activities to be conducted under this \nAgreement, timelines for conducting such activities, and technical information \nrelated to the activities to be conducted.]\n\n\n<\/pre>\n","protected":false},"template":"","meta":{"_acf_changed":false,"_stopmodifiedupdate":true,"_modified_date":"","_cloudinary_featured_overwrite":false},"corporate_contracts_companies":[8151],"corporate_contracts_industries":[],"corporate_contracts_types":[9613,9620],"class_list":["post-42032","corporate_contracts","type-corporate_contracts","status-publish","hentry","corporate_contracts_companies-maxygen-inc","corporate_contracts_types-operations","corporate_contracts_types-operations__services"],"acf":[],"_links":{"self":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts\/42032","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts"}],"about":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/types\/corporate_contracts"}],"wp:attachment":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/media?parent=42032"}],"wp:term":[{"taxonomy":"corporate_contracts_companies","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_companies?post=42032"},{"taxonomy":"corporate_contracts_industries","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_industries?post=42032"},{"taxonomy":"corporate_contracts_types","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_types?post=42032"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}