Trade Secret License Agreement on Ostri Pheromone to attract Ostrinia Furnacalis

TRADE SECRET LICENSE AGREEMENT

BETWEEN

INDONESIAN CENTER FOR AGRICULTURAL BIOTECHNOLOGY AND GENETIC RESOURCES RESEARCH AND DEVELOPMENT

AND

COMPANY A

                                          No: 4610/LB.010/H.11/10/2017

                                          No: 356/SPL/THJ/X/2017

ON

OSTRI PHEROMONE TO ATTRACT OSTRINIA FURNACALIS

This license agreement is made and signed on Tuesday, the Seventeenth of October, Two Thousand and Seventeen (October 17, 2017) in Bogor, Indonesia,  between:   

Henceforth, will be referred to as the FIRST PARTY and the SECOND PARTY, and collectively as the PARTIES.

First of all the PARTIES would like to clarify the following circumstances:

1. The PARTIES were previously bound by a Trade Secret License Agreement of Ostri Pheromone to attract Ostrinia furnacalis, certified with Notarial Deed No. 3 dated October 30, 2012 issued by Henalda Fitrika, S.H., M.Kn, which will end on October 30, 2017, but the PARTIES subsequently agreed to extend and renew it with this license agreement.
2. The FIRST PARTY is the inventor of Ostri Pheromone formula to attract Ostrinia Furnacalis insect pests, through research activities at Indonesian Center for Agricultural Biotechnology and Genetic Resources research and Development, Indonesian Agency for Agricultural Research and Development, therefore the IPR of this Ostri Pheromone formula to attract Ostrinia Furnacalis belongs to Indonesian Agency for Agricultural Research and Development, Ministry of Agriculture, through Trade Secret protection.
3. The SECOND PARTY is an industrial agricultural company sanctioned by Trade License No. 27/24.1PB.1/31.72/-1.824.27/e/2017 and has the capacity in terms of human resources, management, funds, machineries and also facilities to produce Ostri Pheromone to attract Ostrinia Furnacalis .
4. This trade secret license agreement is carried out based on the will of the PARTIES to achieve technology transfer of innovation and dissemination of technology, creating mutually beneficial conditions, and balancing rights and obligations.

Based on the circumstances above, the PARTIES in the spirit of professionalism and good faith has agreed to create a trade secret license agreement for Ostri Pheromone to attract Ostrinia furnacalis, with the following conditions:

Article 1

LEGAL BASIS

1. Law No. 30/2000 on Trade Secret (State Gazette 2000 No. 242, Supplement to the State Gazette No. 4045);
2. Law No. 18/2002 on National System of Research, Development and Application of Science and Technology (State Gazette 2002 No. 84/2002, Supplement to the State Gazette No. 4219);
3. Government Regulation No. 20/2005 on Intellectual Property and Technology Transfer Research and Development by Universities and Institutes for Research and Development (State Gazette 2005 No. 430);
4. Government Regulation No. 29/2009 on Procedures for Determining Tax Rates, Payment, and the Deposit of Unpaid Non-Tax State Income (State Gazette 2009 No. 58, Supplement to the State Gazette 4995);
5. Government Regulation No. 35/ 2016 on Types and Rates of Non-Tax State Revenue Applicable to the Ministry of Agriculture (State Gazette 2016 No. 171, Supplement to the State Gazette 5918);
6. Minister of Agriculture Ministerial Regulation No. 06/Permentan/OT.140/2/2012 on Agricultural Research and Development Cooperation Guidelines;
7. Minister of Agriculture Ministerial Regulation No. 99/Permentan/OT.140/10/2013 on Second Amendment over the Minister of Agriculture Ministerial Regulation number 06/Permentan/OT 140/2/2012 on Agricultural Research and Development Cooperation Guidelines;
8. Minister of Agriculture Ministerial Regulation No. 29/Permentan/OT.140/3/2013 on the Organization and Operation of Institute of Agricultural Technology Transfer;
9. Minister of Agriculture Ministerial Regulation No. 33/Permentan/OT.140/3/2013 on the Organization and Operation of Indonesian Center for Agricultural Biotechnology and Genetic Resources research and Development;
10. Minister of Agriculture Ministerial Regulation No. 05/OT.140/I/2014 on Legal Document Drafting Guidelines for Cooperation Agreements within the Ministry of Agriculture.

Article 2

DEFINITION

In this Agreement, the following terms shall have the following meanings:

• Ostri Pheromone to Attract Ostrinia Furnacalis, henceforth referred to as Ostri Pheromone, shall mean an invention to control Asian Corn Borer (Ostrinia furnacalis), which contains synthetic compounds that act as sex pheromones to attract adult insects and is used as baits in a trap to attract male insects to enter the trap.
• Trade Secret shall mean information in the field of technology and/or business that are not available to the public, which has economic value due to its usefulness in business activities, and kept confidential by the Parties.
• Trade Secret Rights shall mean rights arising from trade secret protection based on trade secret law.
• License shall mean permission granted by a Trade Secret Holder to another party through an agreement based on rights granted (not rights transfered) to obtain economic benefits from a Trade Secret, which is protected within certain period and condition.
• Non-Exclusive License in this agreement shall mean the granting of license to more than one licensees and the licensees do not have the rights to transfer this agreement.
• Technology Transfer shall mean the transfer of skills to utilize and comprehend science and technology between institutions, agencies, or persons, both domestically and internationally.
• Cooperation shall mean the agreement between Indonesian Agency for Agricultural Research and Development as the inventor of technology and domestic or international partners to market and/or develop the product.
• Cooperation Partner shall mean the Central Government, Local Governments, Business Entities, Universities, and non-governmental Organizations.
• Royalty shall mean the economic compensation given to the holder of Trade Secret rights in exchange of granted license.
• The selling price at distributor level shall mean the selling price set by the SECOND PARTY for distributors.
• Audit shall mean the process of collecting and evaluating evidence, information that can be measured regarding economic units carried out by independent entities in order to to determine and report the conformity of those information with predetermined criteria.
• Verification shall mean the monitoring, document research, and inspection to determine the conformity of observed condition with the specified criteria.
• The Ministry of Agriculture's Internal Supervision Apparatus, hereinafter referred to as APIP, shall mean the personnel that conduct supervision through audits, reviews, evaluations, monitoring of the activities of the Ministry of Agriculture.
• Institute for Agricultural Technology Transfer, hereinafter referred to as IATT, shall mean the technical implementing unit in the field of research and development which report to the Director General of the Indonesian Agency for Agricultural Research and Development.

Article 3

GOALS AND OBJECTIVES

• This Trade Secret License Agreement is intended as an effort to disseminate technology to support agricultural development and improve public welfare.
• The objective of this Trade Secret License is to commercially transfer the technology for Ostri Pheromone.

Article 4

SCOPE

The scope of this License Agreement includes:

1. Determination of the licensed technology;
2. Determination of royalty; and
3. Technology transfer mechanism.

Article 5

LICENSING

• The Trade Secret License Agreement of Ostri Pheromone as referred in Article 3 is Non-Exclusive, given by the FIRST PARTY to the SECOND PARTY to carry out production and marketing for domestic and/or overseas markets.
• The commercialization activities as mentioned in Article 3, includes:
  1. Production of Ostri Pheromone;
  2. Promotion, Distribution dan Marketing of Ostri Pheromone.

Article 6

RIGHTS AND OBLIGATIONS

• The FIRST PARTY has the following rights:
  1. Receiving royalty payments of 2% (two percent) from the selling price of Ostri Pheromone at distributor level from the SECOND PARTY;
  2. Supervising the production activity and conduct random or periodic tests to guarantee the product quality;
  3. Receiving commercialization workplans from the SECOND PARTY no later than 3 (three) months after this agreement is signed;
  4. Receiving annual commercialization plans from the SECOND PARTY which covers the production, promotion, distribution and marketing of Ostri Pheromone before the first month (January) of the following year;
  5. Receiving commercialization reports from the SECOND PARTY which details the amount of Ostri Pheromone produced, distributed and sold annually (Januari to December);
  6. Utilizing the Ostri Pheromone formula in research, development and dissemination activities.
• The SECOND PARTY has the following rights:

1. Carrying out the production, promotion, distribution and marketing activities of Ostri Pheromone;
2. Receiving direct or indirect guidance and supervision from the FIRST PARTY for quality assurance of Ostri Pheromone product; and
3. Obtaining and using data, information, recommendation and technology from this cooperation after getting written approval from the FIRST PARTY.
4. Obtaining other trademarks registered by Directorate General of Intellectual Property, Ministry of Law and Human Rights and communicating that to the FIRST PARTY.

• The FIRST PARTY has the following obligations:

1. Providing information and knowledge for the production of Ostri Pheromone;
2. Keeping the formula of Ostri Pheromone secret from other non-contracted parties; and
3. Providing guidance and supervision in producing good quality Ostri Pheromone to the SECOND PARTY, if requested and funded by the SECOND PARTY

• The SECOND PARTY has the following obligations:

1. Paying royalties to the FIRST PARTY at the rate of 2% (two percent) of the sale price of Ostri Pheromone at the distributor level;
2. Carrying out production, promotion, distribution and sale of Ostri Pheromone;
3. Keeping the formula of Feromon Ostri secret from other non-contracted parties, unless authorized in writing by the FIRST PARTY;
4. Maintaining the quality of the product to meet quality standards set by the FIRST PARTY;
5. Submiting a commercialization plan no later than 3 (three) months after this License agreement is agreed and signed by the PARTIES, which contains:

• production plans;
• promotion plans;
• distribution plans;
• marketing plans; and
• estimation sale volume for a period of one year from the commencement of the commercialization plan;

1. Submiting annual reports on production, promotion, distribution and sales no later than January of the following year;
2. Creating complete, accurate and detailed reports and records regarding the sale of Ostri Pheromone, to be used as the basis for calculating royalties that must be paid by the SECOND PARTY according to this agreement, and the records must be kept for 2 (two) years after inspection or in accordance with existing laws;
3. Creating reports on commercialization of Ostri Pheromone to the FIRST PARTY, which includes the amount of annual sales for each period, and the use of public accounting services is strongly encouraged;
4. Putting the "Agro Inovasi" logo proportionally on each package of Ostri Pheromone product;
5. Registering the Ostri Pheromone Trade Secret License Agreement to the Directorate General of Intellectual Property, Ministry of Law and Human Rights; and
6. Providing products for promotional purposes on a regular basis and/or according to the request of the FIRST PARTY.

Article 7

ROYALTY PAYMENTS

The obligation of the SECOND PARTY is to pay royalties as stated in Article 6 paragraph (4) in exchange for the use of the technology to the FIRST PARTY, with the following conditions:

• Royalty payment is 2% (two percent) from the sale price of Ostri Pheromone at distributor level, multiplied by the sales volume for 1 (one) calendar year.
• Payment of royalties by the SECOND PARTY to the FIRST PARTY as stated in paragraph (1) shall be made no later than March 31 of the following year before the due date, through Bank Rakyat Indonesia Bogor Branch with Account Number 0012.01.001890.30.8 belonging to BPn 023 IATT as notified in writing by the FIRST PARTY.
• If the payment of royalties as stated in paragraph (2) is made after the due date, the SECOND PARTY shall be subjected to a fine of 2% (two percent) per month in accordance with the laws and regulations.

Article 8

VERIFICATION

• The SECOND PARTY allows the FIRST PARTY's inspector to coordinate with IATT to verify the total sales calculation for Ostri Pheromone and the value of royalties to be paid.
• The verification activity as referred to in paragraph (1) by IATT shall be communicated to the SECOND PARTY at least 10 (ten) days before and implemented no more than 2 (two) times in one calendar year.
• Costs required for verification activities as referred to in paragraph (2) shall be borne by each party.

Article 9

SUPERVISION AND CONTROL

• THE PARTIES allow APIP to supervise and control the scope of this agreement.
• Supervision and control as referred to in paragraph (1) aims to monitor the technology transfer and royalties resulting from the technology transfer according to the provisions of confidentiality specified in relevant laws and regulations.
• Costs required for supervision and control activities as referred to in paragraph (1) shall be borne by the Inspectorate General of the Ministry of Agriculture.

Article 10

SETTLEMENT OF DISPUTES

• If there are disputes in the interpretation and / or implementation of this license agreement, the PARTIES agree to settle it by deliberation to reach a consensus, which will be mediated by IATT.
• In disputes where a consensus cannot be reached, the PARTIES agree to resolve it through Arbitration.
• Arbitration as referred to in paragraph (2) consists of 3 (three) Arbitrators, two Arbitrators are appointed by the PARTIES, who will then appoint the third Arbitrator to act as the Chairperson of the Arbitration Tribunal.
• In case both Arbitrators chosen by the PARTIES as referred to in paragraph (3) fail to appoint a third Arbitrator who will sit as the Chair of the Arbitration Tribunal within 30 (thirty) days, the PARTIES agree to defer to Head of Bogor District Court to appoint the third Arbitrator.
• The fees required for carrying out Arbitration are charged to the PARTIES.
• The Arbitration Council as referred to in paragraph (4) stipulates the procedures and implementation of dispute resolution and makes decisions based on the majority votes of the members, and the decision is absolute and binding for the PARTIES.
• Within the period of dispute resolution, the PARTIES by mutual agreement or the approval of the Arbitration Body can implement this license agreement as before, except for activities that are being disputed.

Pasal 11

FORCE MAJEURE CONDITIONS

• Force majeure is an incident that is beyond human control and cannot be avoided, so that an activity cannot be carried out or cannot be carried out properly.
• Force majeure as referred to in paragraph (1) includes earthquakes, floods, hurricanes, fires, rebellions, wars, sabotages and riots.
• A statement of force majeure as referred to in paragraph (2) can be made by the SECOND PARTY and communicated to the FIRST PARTY at no later than 7 (seven) days after the event of a force majeure, with an evidence of force majeure statement from the head of authorized agencies.
• Losses due to force majeure are the responsibility of each PARTY.
• Force majeure as referred to in paragraph (2), does not eliminate the rights and obligations that have been carried out before the occurrence of force majeure.
• Force majeure can stop the implementation of this agreement based on the consent of the PARTIES.

Article 12

CORRESPONDENCE

• Correspondence for the implementation of this agreement can be carried out in writing, telephone, facsimile and/or electronic mail listed below:
  1. The FIRST PARTY :
     • Institution : Indonesian Center for Agricultural Biotechnology and

 Genetic Resources research and Development

• Address : Jalan Tentara Pelajar No. 3A Kampus Penelitian

                                  Pertanian Cimanggu, Bogor, West Java

• Phone : 0251-8337975
• Fax             : 0251-8338820
• E-mail              : bb_biogen@litbang.pertanian.go.id

1. The SECOND PARTY :
   • Company : Company A
   • Address : Jalan Danau Sunter Selatan, North Jakarta 14350
   • Phone : 021-000 0000
   • Fax             : 021-000 0000
   • E-mail              : info@companyA.com

• Notification or communication is considered to have been carried out, if evidenced by:

1. Acknowledgement of receipt of written letters;
2. Record of delivery and receipt issued by the post office or other delivery services;
3. “OK” sign in fax machines;
4. “Message sent” status in e-mails.

(3)    Any changes as referred to in paragraph (1) must be communicated by the PARTIES.

Article 13

DISCONTINUATION OF AGREEMENT

• If in the implementation of this agreement, the FIRST PARTY or the SECOND PARTY feels aggrieved due to negligence and/or violation of the conditions stated in this agreement, then this agreement can be reviewed.
• The PARTIES can terminate this agreement at any time unilaterally, in the following cases:
  1. Violation of the provisions stated in this agreement, with no rectification within 60 (sixty) days after a written notification from the PARTIES;
  2. The SECOND PARTY is for any reason, except for force majeure as referred to in Article 11, not able to carry out the production and marketing of Ostri Pheromone by a maximum period of 1 (one) year from the date of the signing of this agreement; or
  3. all or part of the essential activities causing this agreement being canceled, due to seizure or an action by law enforcement agencies that cannot be solved within 30 (thirty) calendar days from the date of the notification of legal action by law enforcement agencies.
• The PARTIES agree to terminate this agreement.

Article 14

CONSEQUENCES OF TERMINATION OF AGREEMENT

(1)    If the termination of the agreement as referred to in Article 13 is initiated by the FIRST PARTY, the SECOND PARTY is permitted to continue using all existing raw materials to produce the Ostri Pheromone until production from those materials ends, henceforth the SECOND PARTY must stop its commercialization.

(2)    If termination of the agreement referred to in Article 13 is initiated by the SECOND PARTY, the SECOND PARTY must immediately submit all materials, documents and information without exception to the FIRST PARTY, and stop the production, promotion, distribution and sales of Ostri Pheromone.

Article 15

AMENDMENT

• Other matters that have not been regulated and/or clearly stated in this Agreement will be regulated later in addendums and/or amendments in the agreement and signed by the PARTIES.
• The amendments of agreement as referred to in paragraph (1) shall become one entity which is an integral part of this Agreement.

Article 16

MISCELLANEOUS

• The PARTIES are prohibited from transferring this Agreement.
• The PARTIES are prepared to cover all costs relating to the implementation of their respective rights and obligations, in accordance with this agreement.
• This agreement is based on the laws and regulations of the Republic of Indonesia.

Article 17

DURATION

This agreement shall come into force after its signature by the PARTIES for a period of 5 (five) years with evaluation carried out every year, and can be extended to a duration consented by the PARTIES.

Thus this agreement was made and signed by the PARTIES in 2 (two) copies with appropriate stamp duties and institutional stamps, where each copy has the same legal force, and several copies without stamps were also created for various purposes.