1
EXHIBIT 10.8(c)
AMENDMENT NO. 3 TO COLLABORATION AGREEMENT
This Amendment No. 3 to Collaboration Agreement (the "Amendment No. 3")
effective as of January 1, 1999, is entered into by and between Symyx
Technologies ("Symyx") and Xxxxx XX ("Xxxxx"), and amends that certain
Collaboration Agreement entered into by Bayer and Symyx effective as of March 1,
1998, as previously amended by Amendment No. 1 to Collaboration Agreement
effective as of May 1, 1998 and Amendment No. 2 to Collaboration Agreement
effective as of November 1, 1998 (the "Collaboration Agreement").
1. All capitalized terms not defined in this Amendment No. 3 shall have the
meanings given to them in the Collaboration Agreement.
2. Section 2.2.1 is amended by the addition of new Section 2.2.1(c):
(c) Addition of Polyolefin Project.
(i) Effective as of January 1, 1999, the Research Program
shall include the Polyolefin Field, which is defined as
set forth in Exhibit E.
(ii) FTEs and Experiments. During each calendar year quarter
from January 1, 1999 to December 31, 2001, Symyx shall,
in its discretion taking into consideration what is
required to achieve the objectives of the Project Plan
for the Polyolefin Field, either (i) utilize ten (10)
FTEs to conduct the research in the Polyolefin Field or
(ii) conduct at least seven thousand five hundred
(7,500) separate Program Experiments in the Research
Program. Each FTE utilized by Symyx shall be qualified
for the activities assigned to him or her. As used
herein, a "Program Experiment" shall include (A) an
attempt to synthesize a compound, mixture or composition
of matter for use as a potential catalyst and (B) an
attempt to carryout a polymerization reaction related to
the Polyolefin Field using such compound, mixture or
composition of matter and (C) measurement of a property
of either the potential catalyst or resulting polymer,
if any (e.g., activity of potential catalyst or
physical/chemical properties of polymer). It is
understood and agreed that if different potential
catalysts are used in different experiments, or if two
or more experiments are run using the same potential
catalyst in an attempted polymerization reaction that
is run with different monomers or different reaction
parameters, or if measurement is made of different
properties, then such experiments shall be deemed to be
separate Program Experiments. The Program Experiments
conducted by Symyx during the Research Program for the
Polyolefin Field will be selected consistent with
the objectives set forth in the Project Plan for the
Polyolefin Field.
(iii) Bayer agrees to pay Symyx (i) Research Expenses for
research activities in the Polyolefin Field as set forth
in Section 6.2.1(c), (ii) royalties with respect to
Products in accordance with Section 6.15, and (iii) a
technology access payment in accordance with Section
6.16.
(iv) Following termination of research activities within the
Polyolefin Field, the corresponding Research Field
Committee will prepare a summary of Program Technology
generated in the course of the research activities for
the Polyolefin Field.
3. Section 2.4 is amended to read in its entirety as follows:
2.4 Research Program Term
2.4.1 Initial Term.
-1-
2
(a) Fields Other Than the Polyolefin Field. The
Research Program, other than research activities
in the Polyolefin Field, shall commence on the
Effective Date and, unless extended pursuant to
Section 2.4.2, terminate two (2) years from the
Effective Date of this Agreement (the "Initial
Program Term"). The "Research Program Term"
shall mean the Initial Program Term and any
Extended Research Term set forth in Section
2.4.2.
(b) Research in Polyolefin Field. The research
activities in the Research Program for the
Polyolefin Field shall commence on January 1,
1999 and continue until December 31, 2001 (the
"Polyolefin Project Term").
2.4.2 Extension of Research Program Term. Both parties intend
to identify and propose additional Projects (including
appropriate product driven targets) that will justify
the extension of the Research Program, and agree that
not less than six (6) months before expiration of the
Initial Research Term and any Extended Research Term,
the Executive Committee will meet to discuss possible
Projects for extension of the Research Program. Upon
written agreement of the parties, the Research Program
Term (for activities in the Research Program other than
research in the Polyolefin Field) may be extended up to
three (3) years (the "Extended Research Term"). Except
as the parties may otherwise agree, the funding for
activities (other than research activities in the
Polyolefin Field) in the Research Program during the
Extended Research Term, if any, shall be not less than
Seven Million US Dollars ($7,000,000) from March 1, 2000
to February 28, 2001, not less than Ten Million US
Dollars ($10,000,000) from March 1, 2001 to February 28,
2002, and not less than Twelve Million US Dollars
($12,000,000) from March 1, 2002 to February 28, 2003.
4. Add the following new Section 2.9 to Article 2:
2.9 Other Polyolefin Research by Symyx. It is understood that Symyx
will conduct research activities outside the Research Program
("Other Polyolefin Research") during the Research Program Term
for itself and/or Third Parties for the purpose of identifying
catalysts for making polyolefins other than in the Polyolefin
Field. In the event some Symyx employees work on both the
Research Program and the Other Polyolefin Research, Symyx shall
use good faith commercially reasonable efforts to avoid
potential conflicts or overlaps between the Research Program and
Other Polyolefin Research and misappropriation of any
Confidential Information. It is understood that the library
compounds are regularly used by Symyx and that Symyx can use and
screen the library compounds for any use on its own behalf or
for Third Parties, including without limitation for Other
Polyolefin Research, except to the extent that Symyx has granted
to Bayer exclusive rights to screen and optimize the library
compounds in the Polyolefin Field as set forth in Section 5.1.1.
5. Add the following new Section 2.10 to Article 2:
2.10 EDPM. For a period of two (2) years commencing on January 1,
1999, Symyx will not conduct research on its own behalf or on
behalf of any third party for the purpose of discovering or
developing catalysts to make ethylene propylene diene monomer
polymers ("EPDM"), except as provided in this Section 2.10. If
Symyx wishes to work on catalysts for the purpose of making
EPDM, either on its own behalf or on behalf of a third party,
Symyx will notify Bayer in writing. Whether or not Bayer
receives a notice from Symyx, if Bayer wishes to either fully
fund the work by Symyx in this EPDM
-2-
3
program, if there is no third party, or share the cost of the
program, if there is a third party, Bayer may so notify Symyx in
writing and the parties will negotiate terms for such EPDM
program. The results of such negotiations will require either
shifting resources from the Research Program, or require
additional funding. If Bayer does not wish to participate in the
EPDM program, and Bayer does not give Symyx written consent to
conduct such program on its own behalf or on behalf of a third
party, then Symyx shall not conduct or initiate the EPDM program
prior to January 1, 2001. Bayer understands that Symyx may have
similar obligations to a third party in connection with the
Other Polyolefin Research described in Section 2.9 with respect
to EPDM. Notwithstanding the foregoing, in the event that a
third party provides to Symyx compounds and/or potential
catalysts for making EPDM, Symyx may work with such third party
at any time to conduct research activities directed solely
towards the optimization of such compounds and/or potential
catalysts for making EPDM.
6. Section 4.1 is amended to provide in its entirety as follows:
4.1 Program Technology.
4.1.1 All Fields Except Polyolefin Field. Except as provided
in Sections 4.1.2 and 4.3, title to all inventions and
other intellectual property made by employees or agents
of Bayer and Symyx in the course of and in connection
with the Research Program shall be deemed owned jointly
by Symyx and Bayer, excluding Combinatorial Chemistry
Technology. It is understood that, except as otherwise
expressly provided in this Agreement, both Bayer and
Symyx may use, sublicense, commercialize, or otherwise
exploit all such jointly-owned technology without the
consent of, or obligation to account to, the other
party.
4.1.2 Polyolefin Field. Bayer shall own any inventions or
discoveries conceived and reduced to practice and other
intellectual property otherwise developed solely by
personnel of Bayer or Bayer's Affiliates in the course
of the Research Program relating to the Polyolefin Field
("Bayer Polyolefin Inventions"). Symyx shall own any
inventions or discoveries conceived and reduced to
practice and other intellectual property otherwise
developed solely by Symyx personnel in the course of the
Research Program relating to the Polyolefin Field
("Symyx Polyolefin Inventions"). Bayer and Symyx shall
jointly own any inventions or discoveries conceived
and/or reduced to practice in the course of the Research
Program relating to the Polyolefin Field where personnel
of Symyx and of Bayer have each made inventive
contributions to such inventions which would result in
them being determined to be joint inventors in
accordance with United States patent law and other
intellectual property otherwise developed jointly by
personnel of Symyx and Bayer ("Joint Polyolefin
Inventions").
7. Section 5.1.2 is amended to provide in its entirety as follows:
-3-
4
5.1.2 Bayer Out of Field License. Except with respect to
Program Technology conceived or reduced to practice or
otherwise developed in connection with the research
conducted in the Polyolefin Field in connection with the
Research Program, Symyx agrees to grant and hereby
grants to Bayer an exclusive, worldwide, royalty-free
license, with the right to sublicense, under Symyx's
interest in Program Technology which was invented solely
by Bayer employees and agents, to use such Program
Technology outside of the Field and to develop, make,
have made, import, use, offer for sale, and sell
products other than for use in the applicable Field.
8. Section 5.1.3 is amended to provide in its entirety as follows:
5.1.3 Symyx Out of Field License. Except with respect to
Program Technology conceived or reduced to practice or
otherwise developed in connection with the research
conducted in the Polyolefin Field in connection with the
Research Program, Bayer agrees to grant and hereby
grants to Symyx an exclusive, worldwide, royalty-free
license, with the right to sublicense, under Bayer's
interest in Program Technology which was invented solely
or jointly by Symyx employees and agents, to use such
Program Technology outside of the Field and to develop,
make, have made, import, use, offer for sale, and sell
products other than for use in the applicable Field.
Bayer, Bayer's Affiliates, Symyx, and Symyx's Affiliates
shall each have the right to use Joint Polyolefin
Inventions for internal research purposes outside of the
scope of the Polyolefin Field; provided, however, that
Symyx shall have the sole right to grant and authorize
licenses and sublicenses under such Joint Polyolefin
Inventions to third parties outside of the scope of the
Polyolefin Field. It is further understood and agreed
that Symyx shall have the right to grant third parties
licenses under Joint Polyolefin Inventions outside of
the scope of the Polyolefin Field that are exclusive
even as to Bayer and Symyx, and it is specifically
understood and agreed that Symyx may grant exclusive
licenses under such Joint Polyolefin Inventions outside
of the Polyolefin Field to certain third parties in
connection with the Other Polyolefin Research described
in Section 2.9, and that Symyx shall not be required to
pay any amounts to Bayer hereunder in connection with
such licenses.
9. Section 5.2 is amended to provide in its entirety as follows:
5.2 Bayer Right of First Negotiation. Subject to Symyx's obligations
to third parties, Bayer will have a right of first negotiation
to negotiate with Symyx to acquire an exclusive, worldwide,
royalty-bearing license under Symyx's interest in Program
Technology with the right to sublicense, to develop, make, have
made, import, use, offer for sale and sell products other than
Products, as follows: (i) Symyx will provide notice if it wishes
to pursue a particular product using Program Technology solely
or jointly invented by Symyx employees, and in such event within
sixty (60) days the
-4-
5
parties shall commence negotiations; (ii) such negotiations
shall continue for six (6) months from the date of such notice,
or such longer period as the parties may agree; (iii) if Symyx
and Bayer do not reach agreement within such six (6) month
period, or such longer period as the parties may agree, Symyx
may develop or commercialize such products (other than Products)
with a third party or pursue such product itself without
obligation to Bayer. However, notwithstanding any other
provision of this Agreement, Bayer shall not have a right of
first negotiation with respect to Program Technology that is
identified, discovered or reduced to practice in connection with
the Phenol Project or the research in the Polyolefin Field, and
Bayer agrees (i) not to perform research or use any Lead
Compound from the Phenol Project other than in connection with
oxidation of benzene to phenol and (ii) not to perform research
or use any Lead Compound from the research in the Polyolefin
Field other than in connection with polymerization of
polyolefins within the Polyolefin Field, unless Symyx provides
written consent.
10. Section 5.6 is amended to read in its entirety as follows:
5.6 Combinatorial Chemistry Access & Bayer/Symyx Interface
5.6.1 Access to Combinatorial Chemistry. The parties agree
that on a case by case basis, Bayer may make a written
request to purchase and/or license a piece of equipment
used within the Research Program. In the event that
Symyx receives such a request and may license and/or
sell such equipment without violating any obligations
Symyx may have to third parties, Symyx agrees for a
period of ninety (90) days after receipt of such notice
to negotiate the terms and conditions of such a sale
and/or license including, when applicable, Symyx
resources needed to assemble such equipment. It is
understood and agreed that neither Symyx nor Bayer is
obligated to accept or agree upon the terms of such a
proposed sale and/or license. The transfer of equipment
and/or technology contained in such a license will
include terms for training and transfer of know-how
necessary to operate the equipment. In addition, it is
understood that Symyx has, at its own expense, been
developing and intends to continue to develop a
48-channel parallel polymerization reactor and related
analysis tools (including ambient and high temperature
molecular weight determination modules, a high
throughput thermal analysis module, and certain related
software) for synthesizing, screening or identifying
polymerization catalysts (collectively, the "Discovery
Tools"), and that Symyx will offer some or all of these
Discovery Tools to Bayer and/or Bayer Affiliates, either
through sale of equipment and supplies and/or licenses
to intellectual property or some other means selected at
Symyx's discretion. Symyx agrees to negotiate in good
faith with Bayer to enter into a written agreement
setting forth mutually agreeable terms and conditions on
which Symyx will license and/or sell Discovery Tools on
a non-exclusive basis. It is understood and agreed that
the terms for sale of Discovery Tools by Symyx to Bayer
are to be mutually agreed in writing and this Agreement
does not itself obligate Symyx to sell or Bayer to
purchase such Discovery Tools, or obligate either Symyx
or Bayer to accept or agree to terms and conditions of
any such sale and/or license.
-5-
6
5.6.2 Bayer/Symyx Interface. It is foreseeable that during the
course of the Research Program the focus of Symyx will
relate mostly to the identification of Lead Compounds
using high-throughput synthesis and screening
technologies. Bayer's input in each project will
increase as potential Lead Compounds are identified and
further targeted/focus libraries are designed and
screened. The optimization, validation, and in-depth
testing of Lead Compounds is Bayer's responsibility.
This work will be done with equipment developed by Bayer
independently from the Research Program or with
equipment acquired from Symyx as mentioned in 5.6.1
above. For the purpose of enhancing the efficiency of
the Research Program, the parties agree personnel will
be temporarily transferred during the course of the
collaboration. At least one Bayer scientist will be
located in Symyx's laboratory for an anticipated period
of 6 months per year. Transfer of personnel will occur
once a legal infrastructure relating to confidentiality
and intellectual property can be agreed upon by Bayer
and Symyx. The parties will establish the required legal
structure by August 30, 1999. In addition, Bayer and
Symyx agree to construct a well defined interface and a
new working philosophy which provides Bayer with access
to combinatorial chemistry. The parties will negotiate
in good faith, without obligation to agree, the terms
for implementing such new working philosophy by August
30, 1999.
11. Section 5.1 is amended by addition of the following new Section 5.1.4:
5.1.4 License for EPDM. Within six months after the end of the
Polyolefin Research Term, Bayer may identify and notify
Symyx of up to five Lead Compounds which Bayer may use
in a chemical synthesis program or modify using Program
Technology to produce Agreement Compounds for EPDM. For
so long as Bayer retains a license under Section 5.1.1
to use any Lead Compound from the research activities in
the Polyolefin Field to manufacture, use and sell
Products within the Polyolefin Field, and on the terms
and conditions set forth in this Agreement, Symyx agrees
that Bayer shall also have a non-exclusive, worldwide,
royalty-bearing, license under Symyx's interest in the
Program Technology to use any Lead Compound or
Derivative Compounds based on the up to five Lead
Compounds so notified by Bayer to develop, make, have
made, use, sell, offer for sale, and import EPDM as a
Product under this Agreement. Bayer understands and
acknowledges that Symyx may grant similar rights
regarding EPDM to a third party in connection with the
Other Polyolefin Research described in Section 2.9, and
that one or more Lead Compounds or Derivative Compounds
to which Bayer obtains a license in the Polyolefin Field
may be licensed to the third party for use outside of
the Polyolefin Field, and that both Bayer and such third
party may acquire licenses from Symyx to use one or more
of the same Lead Compound(s) or Derivative Compound(s)
to make EPDM.
12. Section 6.2.1 is amended by the addition of new Section 6.2.1(c) as
follows:
-6-
7
(c) Additional Research Funding for the Polyolefin Field. In
addition to the other Research Expenses to be paid to
Symyx by Bayer pursuant to this Section 6.2.1, Bayer
shall pay to Symyx Research Expenses for research
activities in the Polyolefin Field of (i) Three Million
Five Hundred Thousand US Dollars ($3,500,000) for the
research activities in the Polyolefin Field between
January 1, 1999 and December 31, 1999, and (ii) Three
Million Eight Hundred Fifty Thousand US Dollars
($3,850,000) for the research activities in the
Polyolefin Field between January 1, 2000 and December
31, 2000, and (iii) Four Million Two Hundred Thirty Five
Thousand US Dollars ($4,235,000) for the research
activities in the Polyolefin Field between January 1,
2001 and December 31, 2001.
13. Article 6 is amended by the addition of new Section 6.15:
6.15 Royalties for Polyolefin Field.
(a) The parties agree the royalty model set forth in Section
6.3 shall apply to the Polyolefin Field, and the parties
shall determine the applicable Added Value Royalty Rate
in accordance with Section 6.3.3
(b) Bayer may elect, upon prior notice to Symyx, to have the
forecasts and projections Bayer proposes to use in
determining the Added Value Royalty Rate for the
Polyolefin Field (the "Polyolefin Projections") subject
to restricted access by Symyx personnel as follows: (i)
Bayer shall disclose the Polyolefin Projections to one
employee of Symyx designated by the Chief Executive
Officer of Symyx (the "Designated Employee"); (ii) the
Designated Employee shall not disclose the figures
contained in the Polyolefin Projections (other than the
proposed Added Value Royalty Rate and the projected net
sales) to other Symyx personnel without Bayer's consent;
provided, however, that the Designated Employee may
disclose the Polyolefin Projections to Symyx's attorneys
and the auditor described in (iii), below; and (iii)
Symyx may, at Bayer's expense, have the Polyolefin
Projections and the related calculation of the Added
Value Royalty Rate reviewed by an independent auditor
selected by Symyx, which auditor shall agree not to
disclose the figures contained in the Polyolefin
Projections (other than the proposed Added Value Royalty
Rate and the projected net sales) to Symyx personnel
other than the Designated Employee without Bayer's
consent.
14. Article 6 is amended by the addition of new Section 6.16:
6.16 Combinatorial Polyolefin Technology Access Fee. In addition to
the other payments to Symyx provided herein, Bayer shall pay to
Symyx a combinatorial polyolefin technology access fee of Four
Million Five Hundred Thousand US Dollars ($4,500,000). An
initial payment of One Million Five Hundred Thousand US Dollars
($1,500,000) shall be paid to Symyx on or before January 1,
2000, and the remaining Three Million US Dollars ($3,000,000)
shall be paid to Symyx on or before January 1, 2001. It is
understood and agreed that the combinatorial polyolefin
technology access fee is noncreditable and shall be
non-refundable.
-7-
8
16. Article 6 is amended by the addition of new Section 6.17:
6.17 Special Bayer Compounds. In the event Bayer wishes to include a
compound identified by Bayer independently into a Field within
the Research Program ("Special Bayer Compound"), Bayer shall
notify Symyx in writing without revealing the identity of the
compound. In the event that Symyx receives such notification,
Symyx agrees for a period of ninety (90) days after receipt of
such notice to negotiate special royalty terms and conditions
applicable only to the Special Bayer Compound under which Bayer
would agree to include the Special Bayer Compound within the
appropriate Field of the Research Program. It is understood and
agreed that neither Symyx nor Bayer is obligated to accept or
agree upon the terms of such a proposed royalty readjustment and
the parties must agree in writing before a Special Bayer
Compound is included in the Research Program. This procedure
will be followed on a case-by-case basis.
17. Exhibit E attached to this Amendment No. 3 is hereby incorporated into
the Collaboration Agreement as Exhibit E.
18. Except as specifically modified or amended hereby, the Collaboration
Agreement, as modified or amended by Amendment No. 1 to Collaboration
Agreement and Amendment No. 2 to Collaboration Agreement, shall remain
in full force and effect and, as modified or amended, is hereby
ratified, confirmed and approved. No provision of this Amendment No. 3
may be modified or amended except expressly in a writing signed by both
parties nor shall any terms be waived except expressly in a writing
signed by the party charged therewith. This Amendment No. 3 shall be
governed in accordance with the laws of the State of California, without
regard to principles of conflicts of laws.
-8-
9
IN WITNESS WHEREOF, each of the parties has executed this Amendment No. 3 as of
the date indicated on this Amendment No. 3.
XXXXX XX SYMYX TECHNOLOGIES
By: /s/ XXXXXX XXXXXX /s/ XXX XXXXXXXXXX
--------------------------------- ------------------------------
Name: Prof. Xx. Xxxxxx Xxx Xxxxxxxxxx
--------------------------------- ------------------------------
Title: President & COO
--------------------------------- ------------------------------
Date: Xxxxx 0, 0000 Xxxxx 2, 1999
--------------------------------- ------------------------------
By: /s/ X.X. XXXXXXXXXX
---------------------------------
Name: Prof. Xx. Xxxx-Xxxxxxx Xxxxxxxxxx
---------------------------------
Title: Head of Central Research
---------------------------------
Date: March 5, 1999
---------------------------------
SYMYX CONFIDENTIAL
-9-
10
EXHIBIT E
POLYOLEFIN FIELD
THE POLYOLEFIN FIELD SHALL BE DEFINED AS:
(1) The discovery, development and use of catalysts for the Coordination
Polymerization of a conjugated diene with vinyl acetate or any acrylate;
(2) The discovery, development and use of catalysts for the Coordination
Polymerization of ethylene and/or (alpha)-olefins with acrylonitrile or an
acrylonitrile derivative;
(3) The discovery, development and use of catalysts for the Coordination
Polymerization of ethylene and/or (alpha)-olefins with cyclic comonomers.
Cyclic monomers contain an olefin in the ring structure. Styrene and
substituted vinyl aromatic analogs are not considered cyclic monomers. It
is understood that EPDM (ethylene propylene diene monomer) polymers are
excluded from this definition.
(4) The discovery, development and use of catalysts for the Coordination
Polymerization of styrene and/or substantial styrene and/or substituted
styrene analogs with acrylonitrile or an acrylonitrile derivative;
(5) The discovery, development and use of catalysts for the Coordination
Polymerization of ethylene and/or (alpha)-olefins with vinyl acetate or
any acrylate to form copolymers comprised of either more than 20 mole % of
the comonomer or less than 80 mole % of the comonomer.
1) For clarity, Coordination Polymerization shall mean a metal mediated
polymerization that proceeds by a polymerization reaction other than free
radical, controlled free radical, and carbocationic mechanisms.
2) For Fields (1), (2), and (4) it is understood that non-conjugated dienes
may be optionally incorporated into the polymerization reaction.
3) The chemicals mentioned above have the following chemical structures:
[GRAPHIC] [GRAPHIC] [GRAPHIC] [GRAPHIC]
(alpha)-Olefins Acrylonitrile Acrylates Vinyl Acetate
[GRAPHIC] [GRAPHIC] [GRAPHIC]
Substituted Conjugated Dienes Acrylonitrile Derivatives
Vinyl Aromatic Analogs
[GRAPHIC]
Non-Conjugated Diene
--------------------------------------------------------------------------------
R(1) = linear, branched, or cyclic saturated hydrocarbon moiety. Excluding
acrylates, R(1) may also be a hydrogen moiety. For conjugated dienes, any two
R(1) may be joined through a covalent bond. For substituted vinyl aromatic
analogs, Ar = unsubstituted aromatic hydrocarbyl moiety or an aromatic
moiety substituted with hydrocarbyl or halogen substituents. For non-conjugated
dienes, R(7) may also be an unsubstituted aromatic hydrocarbyl moiety or an
aromatic moiety substituted with hydrocarbyl or halogen substituents.
--------------------------------------------------------------------------------
