Confidentiality and Material Transfer Agreement - Plant Germplasm

Material use, testing and development agreement

          This Material Use and Testing Agreement (“Agreement”) is made on ________ (“Effective Date”) by and between xxxxx Inc. (“Testing Party”) and ____________. (“PROVIDER”).

Recitals

PROVIDER has legal rights to certain proprietary [specify crop] inbreds [and hybrids]. Testing Party desires to use the PROVIDER Materials (hereinafter defined) for the purpose of research, and breeding and developing new [specify crop] lines on the terms and subject to the conditions and restrictions set forth in this Agreement.

NOW THEREFORE, in consideration of these Recitals and the mutual promises and covenants set forth in this Agreement, PROVIDER and Testing Party agree as follows:

1. Definitions. For purposes of this Agreement (including the introductory paragraph and Recitals), the following words and phrases shall have the following respective meanings.  Other capitalized terms used in this Agreement shall have the meanings ascribed to them elsewhere in this Agreement.

1.1    “PROVIDER Materials” means the [specify crop] inbreds [and/or hybrids listed] on Schedule 1.

1.2    “Development Material” means all breeding populations, segregating material, pre-commercial inbred corn lines and any seed, pollen, plants, plant parts, genetic material, and/or genetic patterns, of the foregoing and/or any progeny of any of the foregoing that are developed by Testing Party pursuant to this Agreement using the PROVIDER Materials.

1.3    “Intellectual Property” means any patent, plant variety protection right, trade secret, know-how, or any other form of intellectual property including related applications in any country of the world in relation to the PROVIDER Material, including the rights specified in Schedule 1.

1.4     “Covered” with respect to a Development Material means any plant or plant material whose manufacture, import, use, offer for sale, or sale would, absent the license, constitute an infringement, inducement of infringement or contributory infringement of the Intellectual Property.

1.5    “Territory” means [globally].

2. Use and Restrictions.

2.1    Subject to the terms and conditions of this Agreement, PROVIDER grants Testing Party the limited, non-exclusive, non-assignable, non-transferable right and license under the Intellectual Property, without the right to sublicense other than permitted herein, to use the PROVIDER Materials in the Territory:

(a)   to grow, test, evaluate, analyze and collect information and/or data on plants produced in the Territory from the PROVIDER Materials for testing purposes only,

(b)   to research, have researched, develop, have developed, make and have made Development Material using existing and/or future methods of development such as mutation, genetic manipulation, and/or insertion, removal, or modification of genes, RNA and/or DNA, and/or

(c)    to introgress and have introgressed, induce and have induced one or more Trait(s) into Development Material for the purpose of developing, having developed, making and/or having made Development Material that express such Trait(s) and to grow, test, evaluate, analyze and collect information and/or data on such Development Material that express such Trait(s). 

2.2    Except for the limited pre-commercial testing and development rights described in Section 2.1, Testing Party shall have no other rights to use the PROVIDER Materials.  All proprietary rights to own, use, exploit, develop, market and sell the PROVIDER Materials other than those specifically granted to Testing Party by this Agreement are hereby reserved by PROVIDER.

2.3    Testing Party shall use the Development Material produced from the PROVIDER Materials solely for the purposes described in Section 2.1 and for no other purpose.

2.4    Testing Party shall not give, sell, provide or make available the PROVIDER Materials and/or Development Material and/or any seeds, pollen, plants or plant parts derived from the PROVIDER Materials and/or Development Material to anyone except authorized personnel or third parties contractually performing testing, research, development and/or quality control services on behalf of Testing Party. Testing Party shall require and cause every person or entity, including Testing Party’s officers, directors, employees, consultants, attorneys, sub-contractors and/or affiliates, having access to PROVIDER Materials and/or Development Material or any seed, pollen and plants from PROVIDER Materials, and/or Development Material, including any plant parts, genetic material, or genetic patterns, or any progeny of any of the foregoing, to agree to hold and abide by the protections and restrictions contained in this Agreement applicable to, or relating to, PROVIDER Materials, Development Material and/or Confidential Information.

2.5    Testing Party shall use the PROVIDER Materials and Development Material only in the Territory unless authorized by written permission from PROVIDER.

2.6    Unless PROVIDER and Testing Party have entered into a commercial license agreement, Testing Party shall destroy all unused seed of PROVIDER Materials and/or Development Material [Covered by the Intellectual Property] upon expiration or termination of this Agreement for any reason.

2.7    Testing Party shall not publish or disclose to anyone other than PROVIDER any information about (a) the PROVIDER Materials [and/or Development Material] and/or (b) the tests, research and/or development activities of Testing Party under this Agreement if it specifically discloses or refers to PROVIDER material without sending a copy of such publication or disclosure to PROVIDER at least five (5) working days prior to such publication or disclosure. 

          For the avoidance of doubt, Testing Party shall have the right to use the results of its tests, research, and/or development activities in (a) patent applications associated with Testing Party’s proprietary technology and/or (b) right to use the results of its tests, research, and/or development activities in Testing Party’s investor materials without the prior written consent of PROVIDER. 

[2.8   Testing Party agrees to negotiate with PROVIDER a non-exclusive commercial license agreement for the Development Material if the Testing Party intends to commercialize any Development Material resulting from Testing Party’s research and testing of the PROVIDER Materials.] 

3. Commercial Agreement.

[3.1   Nothing in this Agreement shall be construed by implication or otherwise, as an obligation of the Testing Party or PROVIDER to enter into future research or commercial agreement(s) concerning the PROVIDER Materials.]

3.2    PROVIDER grants the Testing Party the option to a commercial license to any Development Material [Covered by the Intellectual Property]. The terms should be reasonable and equivalent to those customary for licenses to essentially derived varieties in [specify crop].

3.2    Testing Party must complete a commercial license agreement before producing or selling any inbred or hybrid containing PROVIDER Materials and/or Development Material [Covered by the Intellectual Property].  Each inbred or hybrid containing PROVIDER Materials and/or Development Material must be listed on a Schedule to the commercial license agreement.

4. Announcements.

Testing Party shall inform all personnel and other person(s) permitted to use the PROVIDER Materials and/or Development Material pursuant to the terms of this Agreement of the obligations and restrictions set forth in this Agreement and Testing Party shall be responsible for their compliance with the terms of this Agreement.

4. Indemnification. Testing Party agrees to be solely responsible for and to defend and indemnify PROVIDER and to hold harmless from any and all demands, claims, causes of action or damages, including attorneys fees and expenses, for injuries to persons (including death) or damage to property (including infringement of intellectual property resulting from actions by Testing Party) arising out of, resulting from or related to the testing provided herein or the transfer and use of the PROVIDER Materials and/or Development Material. In no event shall PROVIDER be liable for any damages, direct, indirect or consequential, resulting from any use of the PROVIDER Materials and/or Development Material.

5. Term.

6.1    Unless earlier terminated pursuant to 6.2 below, this Agreement shall continue until written notification by the Testing Party that all use of PROVIDER Materials has been discontinued by the Testing Party. Upon termination of this Agreement, Testing Party shall return or destroy all PROVIDER Materials [and Development Material Covered by the Intellectual Property].

6.2    Following written notice of material breach by Testing Party that remains uncorrected for 30 days after such notice, PROVIDER may terminate this Agreement by written notice.

6.3    Sections 2.2 through 2.8, 4, 5 and 6 shall survive any termination of this Agreement.

7. Miscellaneous. This Agreement shall be governed by the laws of [VENUE], supersedes all prior written and oral agreements and understandings with respect to its subject matter, and may be amended only in writing signed by both parties. This Agreement shall be binding upon the parties and their successors and assigns, and may not be assigned, delegated or otherwise transferred by Testing Party without the written consent of PROVIDER. A change of control of Testing Party shall be considered a transfer of this Agreement.  Any attempted assignment in violation of this provision will be void.  Notwithstanding the forgoing any merger, consolidation or restructuring of PROVIDER shall not affect the validity of this Agreement.

IN WITNESS WHEREOF, the parties accept the terms and conditions of this agreement by the signatures set forth below.