Exhibit 10.1


 


***Text Omitted and Filed Separately


with the Securities and Exchange Commission.


Confidential Treatment Requested


Under 17 C.F.R. Sections 200.80(b)(4)


and 240.24b-2.


 


SIXTH
AMENDMENT

TO THE

COLLABORATIVE RESEARCH AND LICENSE AGREEMENT


 


THIS SIXTH AMENDMENT TO THE COLLABORATIVE RESEARCH AND
LICENSE AGREEMENT (the “Sixth Amendment”) is made by and between SENOMYX, INC. (“Senomyx”), a
Delaware corporation, having a principal place of business at 4767 Nexus Centre
Drive, San Diego, CA 92121, and NESTEC, LTD. (“Nestlé”), a Swiss
company, having a principal place of business at Avenue Nestlé 55, CH-1800
Vevey, Switzerland.


 


WHEREAS, Senomyx and Nestlé entered
into that certain Collaborative Research and License Agreement dated as of
April 18, 2002, as amended by that certain First Amendment dated October 23,
2003, that certain Second Amendment dated April 17, 2005, that certain Third
Amendment dated March 22, 2006, that certain Fourth Amendment dated April 14,
2008 and that certain Fifth Amendment dated September 15, 2008 (collectively,
the “Agreement”);
and


 


WHEREAS, the parties wish to amend
the Agreement in the manner set forth in this Sixth Amendment (capitalized
terms used but not otherwise defined in this Sixth Amendment shall have the
meanings given such terms in the Agreement).


 


NOW, THEREFORE, in consideration of the
foregoing premises and of the covenants, representations and agreements set
forth below, the parties hereby agree to amend the Agreement as follows:


 


AGREEMENT


 


1.                                        Appendix A to
the Agreement is hereby amended by either adding or amending, as provided
below, the following definitions:


 


“[***] Category”
means [***] applications in the [***] Category in [***].


 


“Base Royalty Payment”
has the meaning set forth in Section 7.4(A)(ii)(c) of the Agreement.


 


 “[***]” means the [***] of Umami Products [***] by or on
behalf of Nestlé or its Affiliates.


 


“Incremental Royalty
Payment” has the meaning set forth in Section 7.4(A)(ii)(c) of the
Agreement.


 


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“[***] Category”
means [***], which are ready to eat [***].


 


“Relevant Category”
means the [***] Category, or the [***] Category, or the [***] Category, or the
[***] Category, the [***] Category or the [***] Category for [***] Products and
the [***] Category, or the [***] Category for [***] Products.


 


“Royalty Rate”
means as set forth in Section 7. 4(A)(ii)(c) of the Agreement.


 


“Umami Field”
means the [***] Category, the [***] Category, the [***] Category, the [***]
Category, the [***] Category and the [***] Category and specifically excludes
the [***] Category, the [***] Category, and the New Category, except as
provided for under Section 3.2. The Umami Field does not include [***].


 


“Weight” or “W” means the weight of S336 (in kilograms) used in Umami
Products [***] applicable Calendar Year by or on behalf of Nestlé or its
Affiliates.


 


2.                                      Section
7.4(A)(ii)(c) of the Agreement is hereby amended and restated in its entirety
with respect to royalties payable on sales of Umami Products that are manufactured
using S336 ([***]) as described below. With respect to royalties payable on
sales of Umami Products that are manufactured using [***], the provisions of
Section 7.4(A)(ii)(c) from the Agreement prior to the effective date of this
Sixth Amendment shall continue to apply.


 


“(1)
S336 Royalty Calculation. On or after April 1, 2010, with respect to
Umami Products that are manufactured using S336 ([***]) during the remainder of
the Royalty Term, Nestlé shall pay a nonrefundable royalty on W as described
below.  For each Calendar Year, Nestlé
will pay an annual base royalty (“Base Royalty Payment”) to Senomyx for W up to
[***] kilograms as set forth in the table below.


 


	
  Calendar Year

  	
   

  	
  Base Royalty Payment

  
	
  2010
  

  	
   

  	
  [***]

  
	
  2011

  	
   

  	
  [***]

  
	
  2012

  	
   

  	
  [***]

  
	
  2013

  	
   

  	
  [***]

  
	
  2014
  and each Calendar Year thereafter

  	
   

  	
  [***]

  



 


In
addition, in the event that for any Calendar Year W is greater than or equal to
[***] kilograms, Nestlé will pay an additional [***] per kilogram of W in
excess of the first [***] kilograms of W, subject to adjustment as set forth
below (hereinafter, the “Incremental Royalty Payment”).  Notwithstanding the foregoing, in the event
that W for 


 


2

















 


any
Calendar Year has decreased from W for the immediately preceding Calendar Year,
the Incremental Royalty Payment amount due will not decrease.  In such event, the Incremental Royalty
Payment amount due will be [***] described below, if applicable).


 


The
Incremental Royalty Payment rate will remain constant through the end of 2013.
Commencing for the 2014 Calendar Year and beyond, the Incremental Royalty
Payment under this Section 7.4(A)(ii)(c) will be increased annually [***]
Calendar Year.  The first adjustment will
be effective on January 1, 2014 and annually on each anniversary thereafter.


 


It
is understood and agreed that during a given Calendar Year the Incremental
Royalty Payments are incremental to the Base Royalty Payment for that Calendar
Year.


 


For
the avoidance of doubt, the royalties payable by Nestlé will be exclusive of
any manufacturing costs. Where it is agreed that Senomyx will manufacture or
procure the manufacture of any Umami Compound, Nestlé will pay (or will procure
that its Affiliates shall pay) the agreed manufacturing costs of any Umami Compound
in accordance with this Agreement. Where Nestle or any of its Affiliates will
manufacture or procure the manufacture of any Umami Compound by a Third Party,
then Nestle or the applicable Affiliate shall pay the applicable manufacturing
costs of any Umami Compound and such payments to any Third Party shall not
reduce amounts payable to Senomyx pursuant to this Agreement.


 


(2)
S336 Royalty Payments Timing. Notwithstanding the first sentence of
Section 7.6, the first Base Royalty Payment under the foregoing terms for the
period April 1, 2010 through December 31, 2010 will be due within thirty (30)
days of the effective date of the Sixth Amendment.  Nestlé will pay the Base Royalty of [***] at
that time in a single lump sum.  Within
[***] days of the end of each quarterly period of 2010 in which royalties are
earned during the 2010 ([***]), Nestlé shall pay any Incremental Royalty
Payments due to Senomyx based on the actual W recorded for applicable Umami
Products [***] applicable quarterly period.


 


Notwithstanding
the first sentence of Section 7.6, within [***] days following January 1st of
each Calendar Year beginning in 2011, Nestlé shall pay the applicable Base
Royalty Payment in a single lump sum. 
Within [***] days of the end of each quarterly period of the Calendar
Year in which such Royalties are earned, Nestlé shall pay any additional
Royalty due to Senomyx for W greater than or equal to [***] kilograms based on
the actual W recorded for Umami Products [***] the applicable period.


 


 (3) [***] Royalty Payment. On or after
[***], in the event that Nestlé has not achieved [***] in Umami Products of at
least [***], either party [***] based on the scope of the exclusive and
geographical rights then granted to Nestlé. In such circumstance, in order that
Senomyx [***] in Umami Products, Nestlé shall provide Senomyx with a report
detailing on an annual basis [***] to Nestlé (or its respective Affiliate)
[***] basis. The parties [***] Royalty Payment, considering the [***] under the
circumstances. The terms and conditions of any [***] having regard to all the
circumstances. In the event that the parties [***] Royalty Payment within of a
party [***], either party may [***] referred to in this Section 7.4(A)(ii)(c)
shall constitute a Dispute and be resolved according to the 


 


3

















 


mediation
provisions (but not the arbitration provisions) set forth in Section 17.4. In
such instance, each party shall bear their own out-of-pocket expenses for the
conduct of such negotiations, including attorneys fees, and the party [***].
For avoidance of doubt, a [***] Royalty Payment shall not [***] in accordance
with this Section 7.4(A)(ii)(c) [***] Royalty Payment, [***] subject to Nestle’s
right [***] hereof.


 


(4)
Royalty Reporting for Umami Products Manufactured With S336.
Notwithstanding the second sentence of Section 7.6, with each royalty payment
under Section7.4(A)(ii)(c) related to Umami Products that are manufactured
using S336 ([***]), Nestlé (or its respective Affiliate) will furnish to
Senomyx a statement in sufficient detail to permit confirmation of the accuracy
of the royalty payment made and such statement shall consist of the following
information: (i) the W; (ii) the [***] Nestlé (or its respective Affiliate)
during the applicable period and [***] the applicable period; and (iii)
[***];  For the avoidance of doubt, even
if no quarterly Incremental Royalty Payment is owed to Senomyx under
Section7.4(A)(ii)(c) above [***], Nestlé will provide such reports showing (i)
through (iv) above to assist Senomyx with its financial forecasting.”


 


3.                                      Section 8.1(A)
is hereby amended so that each reference to the term “Compound” shall hereafter
be replaced with the term “Selected Compound”.


 


4.                                      Sections 8.1(B)
and (C) of the Agreement are hereby amended such that all license grants under
their respective subsections (iii) through (viii) are hereafter limited solely
to S336 [***].


 


5.                                      The following
subsection is hereby added at the end of Section 8.1(B) of the Agreement:


 


“and (ix) a nonexclusive,
nontransferable (except as permitted under Section 17.12), license under the
Senomyx Technology to use S336 [***], solely for non-commercial development of
Umami Products in the [***] Category.”


 


6.                                        The following
subsection is hereby added at the end of Section 8.1(C) of the Agreement:


 


“;and
(ix) a nonexclusive, nontransferable (except as permitted under Section 17.12),
license under the Senomyx Technology to make, have made, use, sell, offer for
sale, have sold, import and export Umami Products that contain S336 [***], in
the [***] Category.”


 


7.             A
new Section 8.1(D) is hereby added to the Agreement as follows:


 


“Within [***] of the date of
[***] which has been [***], which includes [***], Nestlé must notify Senomyx in
writing of [***] in the applicable Relevant Categories [***].  Such written notice from Nestlé shall include
[***] (if different than those set forth in Section [***]).  In the event that Senomyx does not receive
such written notification and proposal within [***] Umami Compound under the
Agreement.  If Nestlé properly submits
written notice within such [***] the parties shall negotiate in good faith for
a period not to exceed [***] from the date of such written notice to [***] that
is mutually satisfactory to both parties. In such circumstance, the parties
agree to negotiate in good faith and to consider [***] under the
circumstances.  The terms and conditions
of [***] referred to in this Section 8.1(D) will [***] the circumstances.   In the event that the parties are [***]
terms within [***] and that the unresolved matters referred to above in 


 


4

















 


this Section 8.1(D) shall
constitute a Dispute and be resolved according to the mediation provisions (but
not the arbitration provisions) set forth in Section 17.4.  In such instance, each party shall bear their
own out-of-pocket expenses for the conduct of such negotiations, including
attorneys fees, and the party [***] shall pay the entire costs for the conduct
of the mediation. For avoidance of doubt, a party’s request to [***]. If Nestle
requests that the parties [***] period or following such mediation, or if
neither party has invoked the dispute resolution provisions of Section 17.4,
then [***] an Umami Compound under the Agreement.


 


8.                                        As an express condition to
this Amendment and notwithstanding anything in the Agreement to the contrary,
the parties acknowledge and agree that except with respect to the rights to
S336 [***] Relevant Categories and territories) expressly granted in Section 8.1,
Nestlé has no rights under Senomyx Technology (and Senomyx will have no
obligations to Nestle or its Affiliates) relating to any Compounds that enhance
and/or mimic the taste of monosodium glutamate and Senomyx will not be subject
to any restrictions or limitations under the Agreement or otherwise on its
ability to commercialize or license Compounds that enhance and/or mimic the
taste of monosodium glutamate for any use either directly or through Third
Party collaborations, licenses or other commercial arrangements.


 


9.                                        Except as specifically
amended by this Sixth Amendment, the terms and conditions of the Agreement
shall remain in full force and effect.


 


10.                                 This Sixth
Amendment will be governed by the laws of the State of California, U.S.A., as
such laws are applied to contracts entered into and to be performed entirely
within such State.


 


11.                                 This Sixth
Amendment may be executed in two or more counterparts, each of which shall be
deemed an original, but all of which together shall constitute one and the same
instrument.


 


IN WITNESS WHEREOF, the parties have executed
this Sixth Amendment effective as of the date last signed by the parties below.


 


	
  SENOMYX, INC.

  	
   

  	
  NESTEC LTD.:

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  By: 

  	
  /s/Kent Snyder

  	
   

  	
  By:

  	
  /s/Bruce
  McConnell

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Name: 

  	
  Kent Snyder

  	
   

  	
  Name:
  

  	
  Bruce
  McConnell

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Title:

  	
  CEO

  	
   

  	
  Title:
  

  	
  Vice
  President

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Date:

  	
  7/15/10

  	
   

  	
  Date:

  	
  15
  July 2010

  



 


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