Exhibit 10.40
FIRST AMENDMENT TO LICENSE AGREEMENT
This First Amendment To License Agreement ("Amendment") is made as of
March __, 2003 with respect to that certain License Agreement dated November 14,
2000 by and between Agway Inc., a Delaware corporation ("Agway") and Planet
Polymer Technologies Inc., a California corporation ("Planet") (the "Agreement")
in contemplation of the following facts and circumstances:
WHEREAS, Planet and Agway are concurrently terminating the License
Agreement effective November 12, 1998 and the sublicense agreements related
thereto and entering into that certain Sale and License Agreement (For Certain
Technology For Use in Connection With Fruit, Vegetable, Floral, Nursery and
Related Products) (the "FVFN Agreement") and that certain Sale and Licensing
Agreement (For Certain Technology in Connection With Animal Feed, Fertilizer,
and Related Products) (the "AFRP Agreement");
NOW, THEREFORE, and in consideration of the covenants, conditions, and
undertakings set forth herein and in the FVFN Agreement and AFRP Agreement,
Agway and Planet agree to amend the Agreement as follows:
1. Section 1 of the Agreement is hereby deleted and amended and
restated as follows: "'Agway's Field of Business' shall have the meaning as
defined in Section 3a, of the FVFN Agreement and Section 3a, of the AFRP
Agreement, as such agreements may be amended from time to time by mutual
agreement of the parties, in writing."
2. Section 3 of the Agreement is hereby deleted and amended and
restated as follows: "Subject to all of the terms and conditions of this
Agreement as amended, Agway hereby grants to Planet, and Planet hereby accepts,
an irrevocable, exclusive, worldwide, royalty free license under the Patent
Rights to make, use, sell, offer to sell, sublicense and otherwise commercially
exploit the subject matter of the inventions disclosed in the Patent
Applications, or arising from any New Technology, as defined in this Agreement,
owned by Agway, (the "Planet License"), provided, however, that (a) the Planet
License shall be limited to only all uses other than and outside of Agway's
Field of Business, and (b) "Products," as defined in the FVFN Agreement and the
AFRP Agreement, are, without limitation, specifically excluded from the Planet
License, provided further that, in the event, pursuant to the terms of the FVFN
Agreement and the AFRP Agreement, Agway's License as defined in the FVFN
Agreement and the AFRP Agreement, becomes no longer exclusive as to any one or
more Products, as defined in the FVFN Agreement and the AFRP Agreement, the
Planet License shall also include a non-exclusive, worldwide, royalty free
license under the Patent Rights to make, use, sell, offer to sell, sublicense
and otherwise commercially exploit in Agway's Field of Business the subject
matter of the inventions disclosed in the Patent Applications, or arising from
any New Technology, as defined in this Agreement, owned by Agway, only for such
Products as to which Agway's License is no longer exclusive; provided further
that until Agway's License, as defined in the FVFN Agreement and the AFRP
Agreement, with respect to a Product or Products has terminated as provided in
such agreements, Agway shall retain the nonexclusive right to make, use, sell,
offer to sell, sublicense and otherwise commercially exploit such Product or
Products
notwithstanding the termination of Agway's exclusive License rights with respect
to such Product or Products; and provided further that upon the termination of
Agway's License pursuant to Section 15 of either the FVFN Agreement or the AFRP
Agreement as to any "Product", (1) the Planet License shall become an
irrevocable, exclusive, worldwide, royalty free license under the Planet Rights
to all uses, including those contained within Agway's Field of Business and (2)
such "Products," as defined in the FVFN Agreement and the AFRP Agreement shall
be included in the Planet License."
3. The phrase "New Technology" shall mean any technology acquired
by Agway form Planet pursuant to section 4b and 9 of either the FVFN Agreement
or the AFRP Agreement.
4. Section 9 and Sub-Section 14c are hereby deleted in their
entirety.
5. Section 23 is amended to provide that the arbitration
proceeding shall be held in Syracuse, New York, if instituted by Planet and in
San Diego, California, if instituted by Agway. Any reference to Buffalo, New
York is hereby deleted.
6. Section 24 is hereby amended to provide that a copy of any
written communication or notice to Planet shall also be given x/x Xxxxxxxxx,
Xxxxxxx & French, 000 Xxxxxxxxx Xxxxxx, Xxxxxx Xxxxx, Xx Xxxxx, XX 00000,
Attention: Xxxxxx X. Xxxxxxxxx.
7. Except as amended and modified by this Amendment, the
Agreement remains in full force and effect.
8. Unless otherwise provided in this Amendment, any capitalized
or defined terms used in this Amendment shall have the same meaning as provided
in the FVFN Agreement and AFRP Agreement.
PLANET POLYMER TECHNOLOGIES, INC. AGWAY, INC.
By: ______________________________ By: _________________________________
Title: ___________________________ Title: ______________________________
Date: ____________________________ Date: _______________________________
2
