Exhibit

10.1




 




Portions of this Exhibit have been omitted pursuant to a request for

confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934,

as amended (the “Exchange Act”).  The

omitted portions are marked [ ** ] and have been filed separately with the

Securities and Exchange Commission (the “Commission”).




 




ASSET

TRANSFER AND SUBLICENSE AGREEMENT




 




THIS ASSET TRANSFER AND SUBLICENSE AGREEMENT, dated

and effective as of September 20, 2002 (the “Effective Date”), is by and

between [  **  ] (“[  **  ]”), having its principal place of business

at [  **  ], and ENCHIRA BIOTECHNOLOGY CORPORATION, a Delaware corporation

(“Enchira”), having its principal place of business at 4200 Research Forest

Drive, The Woodlands, TX 77381 (collectively, the “Parties”).




 




RECITALS




 




WHEREAS, [ 

**  ] has developed technologies

for, among other things, the  [  **  ]

;




 




WHEREAS, Enchira owns and has licensed intellectual

property and materials related to, among other things, biodesulfurization of

fossil fuels (“BDS”);




 




WHEREAS, [ 

**  ] desires to acquire from

Enchira, and Enchira desires to transfer to [ 

**  ], certain of Enchira’s

intellectual property and materials related to BDS;




 




WHEREAS, [ 

**  ] desires to sublicense from

Enchira, and Enchira desires to sublicense to [  **  ], certain of

Enchira’s intellectual property related to BDS; and




 




WHEREAS, the Parties desire to set forth herein the

terms governing such transfer and such sublicense.




 




NOW, THEREFORE, in consideration of the mutual

covenants set forth in this Agreement, the receipt and sufficiency of which the

Parties hereby acknowledge, the Parties, intending to be legally bound, hereby

agree as follows:




 




1.             DEFINITIONS.




 




“Additional

Materials” shall mean the materials listed in Schedule D.




 




“Affiliate”

shall mean any entity that directly or indirectly Owns, is Owned by or is under

common Ownership, with Enchira, or [ 

**  ], as the case may be, where

“Owns,” “Owned” or “Ownership” means direct or indirect possession of more than

fifty percent (50%) of the outstanding voting securities of a corporation or a

comparable equity interest in any other type of entity or such lesser amount as

constitutes control in the relevant jurisdiction.




 




“Agreement”

shall mean this Asset Transfer and Sublicense Agreement.




 




“Assigned

Know-How” shall mean all know-how, trade secrets, inventions,

data, processes, procedures, devices, methods, formulas, media, strains and all

lines, reagents, protocols and marketing and other information and materials,

including improvements thereon, whether or not patentable, but which are

necessary or useful for the commercial 




 





























 




[  **  ] This portion has been omitted based on a request for

confidential treatment pursuant to Rule 24b-2 of the Exchange Act.  The omitted portion has been separately

filed with the Commission.




 




exploitation of the Assigned Patent Rights or Sublicensed Patent Rights

or the construction, installation, development or operation of BDS Units or the

development, use, manufacture, offer for sale, sale, import, or export of

products or services produced using BDS Units, in each case which are owned by

Enchira as of the Effective Date. Assigned Know-How shall not include Assigned

Patent Rights or the Sublicensed Patent Rights.




 




“Assigned

Patent Rights” shall mean the patents and patent applications

listed in Schedule A and all provisionals, converted provisionals, continued

prosecution applications, substitutions, divisionals, continuations,

continuations-in-part, reissues, reexaminations, extensions and supplementary protection

certificates thereof, including foreign counterparts of the foregoing, which

comprise all patent applications and issued and subsisting patents claiming

inventions, owned by Enchira as of the Effective Date, which are necessary or

useful to construct, install, develop or operate BDS Units or to develop, use,

manufacture, offer for sale, sell, import, or export products or services

produced using BDS Units.




 




“Assigned

Technology” shall mean the Assigned Know-How and the Assigned

Patent Rights.




 




“BDS”

shall have the meaning set forth in the Recitals above.




 




“BDS

Unit” shall mean a fermenter or other apparatus, together

with all components thereof, designed to be used, or actually used, for BDS.




 




“Confidential

Information” shall have the meaning set forth in Section 6.1.




 




“Covered

Technology” shall mean the Assigned Technology and the

Sublicensed Technology.




 




“Defaulting

Party” shall have the meaning set forth in Section 9.3.1.




 




“Excluded

Items” shall mean any technology and/or materials that are or

have been subject to arbitration and/or litigation with Maxygen, Inc., or any

order or ruling resulting therefrom, including, without limitation, those items

that involve or involved the process referred to by Enchira as RACHITTÔ.




 




“GTI”

shall mean The Gas Institute of Technology.




 




“GTI

License Agreement” shall mean the License and Technology

Assistance Agreement, dated January 15, 1991, between Enchira and GTI, as

amended as of the Effective Date.




 




“Indemnitee”

shall have the meaning set forth in Section 8.1.




 




“Non-Defaulting

Party” shall have the meaning set forth in Section 9.3.1.




 




2





























 




[  **  ] This portion has been omitted based on a request for

confidential treatment pursuant to Rule 24b-2 of the Exchange Act.  The omitted portion has been separately

filed with the Commission.




 




“Notice

of Default” shall have the meaning set forth in Section

9.3.1.




 




“Party”

shall mean [  **  ] or Enchira, as applicable.




 




“Performance

Default” shall have the meaning set forth in Section 9.3.1.




 




“Petro

Star” shall mean Petro Star Inc., an Alaska corporation.




 




“Product”

shall mean fossil fuels produced utilizing Covered Technology.




 




“Purchase

Price” shall have the meaning set forth in Section 4.1.




 




“RACHITTÔ” is a trademark of Enchira and, as used

herein, shall mean the DNA shuffling process publicly referred to by Enchira as

“random chimeragenesis on transient templates,” including the technology

described and claimed (either as originally filed and/or amended at any time)

in U.S. Patent Application No. 60/160,420, dated October 19, 1999, or U.S.

Patent Application No. 09/514,660, dated February 29, 2000, or U.S. Patent

Application No. 09/618,935, dated July 18, 2000, or PCT Patent Application WO

01/29211, dated October 19, 2000, and/or any U.S. or foreign patent application

issuing from or claiming priority through any of the preceding patent

applications, as well as any other technologies that are not described in any

of the preceding patent applications but which are mere modifications of any

invention claimed therein.




 




“Representation

Default” shall have the meaning set forth in Section 9.3.1.




 




“Sublicense”

shall mean the sublicense set forth in Section 3.1.




 




“Sublicensed

Know-How” shall mean that Know-How, as defined in the GTI

License Agreement, whether or not patentable, licensed by Enchira pursuant to

the GTI License Agreement as of the Effective Date. Sublicensed Know-How shall

not include the Sublicensed Patent Rights.




 




“Sublicensed

Patent Rights” shall mean all Industrial Property Rights, as

defined in the GTI License Agreement, including the patents listed in Schedule

B, together with all associated provisionals, converted provisionals, continued

prosecution applications, substitutions, divisionals, continuations, continuations-in-part,

reissues, reexaminations, extensions and supplementary protection certificates

thereof, including foreign counterparts of the foregoing, licensed by Enchira

pursuant to the GTI License Agreement as of the Effective Date.




 




“Sublicensed

Technology” shall mean the Sublicensed Know-How and the

Sublicensed Patent Rights.




 




“Term”

shall mean the term of this Agreement as specified in Section 9.1.




 




3





























 




[  **  ] This portion has been omitted based on a request for

confidential treatment pursuant to Rule 24b-2 of the Exchange Act.  The omitted portion has been separately

filed with the Commission.




 




“Third

Party” shall mean any individual, partnership, joint venture,

corporation, trust, estate, unincorporated organization, government or any

department or agency thereof, or any other entity other than [  **  ]

or Enchira or an Affiliate of [  **  ] or Enchira.




 




The above definitions are intended to encompass the

defined terms in both the singular and plural tenses.




 




2.             DATA AND MATERIALS.




 




2.1          Due Diligence.

Schedules A, B and D attached hereto and incorporated by reference herein

contain a listing of certain data, materials, and other intellectual property

of Enchira relating to BDS that are necessary or helpful for [  **  ]

in the practice of BDS, including specified bacterial strains and

reagents.  Enchira hereby represents and

warrants to [  **  ] that none of the items listed on Schedules

A, B and/or D hereto include, incorporate, or are based upon, any Excluded

Items.




 




2.2          Deliverables. On the

Effective Date, Enchira shall immediately transfer to [  **  ]

the data and materials listed on Schedules A, B and D hereto in the quantities

and in the manner set forth on such schedules.




 




3.             ASSIGNMENT AND

ASSUMPTION; SUBLICENSE.




 




3.1          Assignment  by Enchira.   In consideration of and upon payment of the Purchase Price,  Enchira hereby assigns to  [  **  ] free and clear of all liens and

encumbrances, all its right, title and interest in and to the Assigned Patent

Rights and the Assigned Know-How.   As

evidence of such assignment, Enchira will provide, at the request of  [  **  ] on or after the Effective Date and in form

and substance acceptable to [  **  ], duly executed bills of sale and/or

assignment documents transferring the Assigned Patent Rights and the Assigned

Know-How to [  **  ], including, but not limited to, the

Assignment of Patents attached hereto as Schedule F.




 




3.2          Grant of Sublicense.

Subject to the terms and conditions of this Agreement, including payment of the

Purchase Price, Enchira hereby grants to [ 

**  ] a non-exclusive, perpetual,

irrevocable, fully-paid and royalty-free sublicense, with the right to further

sublicense through multiple tiers, to the Sublicensed Technology to use such

Sublicensed Technology to the full extent of Enchira’s rights to the

Sublicensed Technology under the GTI License Agreement (the “Sublicense”).




 




3.3          Excluded Items; Hold

Harmless. Notwithstanding Sections 3.1 and 3.2 herein, nothing within this

Agreement shall be construed to grant [ 

**  ] any rights, license or

sublicense to Excluded Items or to any Enchira technology other than the

Covered Technology and the Additional Materials. Enchira agrees that it will

hold harmless, and will not initiate any legal action against, [ ** ], [  ** 

]’s Affiliates and sublicensees, and/or customers with respect to any

claim for infringement or misappropriation of intellectual property owned by or

licensed to Enchira prior to the date hereof (including all provisionals 




 




4





























 




[  **  ] This portion has been omitted based on a request for

confidential treatment pursuant to Rule 24b-2 of the Exchange Act.  The omitted portion has been separately

filed with the Commission.




 




and converted provisionals existing as of the date hereof relating to

BDS, but excluding the Sublicensed Technology, which is subject to the

Sublicense) arising from the construction, installation, development, and

operation by or for [  **  ] of one or more BDS Units or development,

manufacture, import, export, use, offer for sale, and sale of Products by or

for [  **  ].




 




4.             PAYMENTS.




 




4.1          Payment to Enchira.  In consideration of the transfer of the

Assigned Technology, the grant of the Sublicense and the other rights granted

to [  **  ] by Enchira hereunder, [ 

**  ] will pay to Enchira a total

of Two Hundred Thousand Dollars ($200,000) (the “Purchase Price”) upon receipt

of all deliverables pursuant to Section 2.2 hereof.




 




4.2          Currency. All

payments made pursuant to this Agreement will be paid in United States dollars.




 




4.3          Taxes. Enchira shall

pay any and all taxes levied on account of payment it receives under this

Agreement.




 




4.4          Allocation. The

Parties hereby agree to the allocation of the Purchase Price set forth in

Schedule C. Such allocation shall be adopted for all purposes, and neither

[  ** 

] nor Enchira shall file a tax return or otherwise take a position for

tax purposes, or otherwise, inconsistent with this allocation.




 




5.             INTELLECTUAL PROPERTY

RIGHTS.




 




5.1          Filing, Prosecution and

Maintenance of Patents.




 




5.1.1       Assigned Patent Rights. [  **  ] shall have the sole right, at

its own expense, to control the filing, prosecution and maintenance, defense,

and enforcement of all Assigned Patent Rights.




 




5.2          Cooperation of the

Parties. Each Party agrees (and will cause any of its Affiliates)  to cooperate fully in the

preparation, filing, prosecution and maintenance of any patent rights under

this Agreement. Such cooperation shall include, but not be limited to:




 




(a)           Executing all

papers and instruments, or using reasonable efforts to cause its employees or

agents, to execute such papers and instruments, so as to effectuate the

ownership of intellectual property rights set forth in Article 3 above and to

enable the other Party to file and to prosecute patent applications and to

maintain patents in any country; and




 




(b)           Undertaking no

actions that are potentially deleterious to the preparation, filing, or

prosecution of such patent applications or to the maintenance of such patents.




 




5





























 




[  **  ] This portion has been omitted based on a request for

confidential treatment pursuant to Rule 24b-2 of the Exchange Act.  The omitted portion has been separately

filed with the Commission.




 




6.             CONFIDENTIAL

INFORMATION.




 




6.1          Definition of

Confidential Information. “Confidential Information” shall mean any

technical or business information furnished by one Party (the “Disclosing

Party”) to the other Party (the “Receiving Party”) in connection with this

Agreement, whether orally or in writing which is identified by the Disclosing

Party as confidential. Confidential Information disclosed orally shall be

further identified as confidential in writing within thirty (30) days from the

date of disclosure. [  **  ]’s commitment to Enchira under this Section

6 with respect to Enchira Confidential Information is made only (a) with

respect to Confidential Information disclosed by Enchira to [  **  ]

in connection with the GTI License Agreement and (b) because Enchira is

required to impose such requirements on [ 

**  ] in order to grant the

Sublicense to [  **  ]. For purposes of clarity, [  **  ]

shall have no confidentiality obligation with respect Assigned Technology or

Additional Materials and [  **  ] shall not be required to comply with

Section 9.5 hereof with respect to Assigned Technology or Additional Material.




 




6.2          Obligations. The

Receiving Party agrees that it shall:




 




6.2.1       Maintain all Confidential

Information of the Disclosing Party in strict confidence, except that a

Receiving Party may disclose or permit the disclosure of any such Confidential

Information to its, and its Affiliates, directors, officers, employees,

consultants and advisors who are obligated to maintain the confidential nature

of such Confidential Information and who need to know such Confidential

Information for the purposes set forth in this Agreement;




 




6.2.2       Use all Confidential

Information of the Disclosing Party solely for the purposes set forth in, or as

permitted by, this Agreement; and




 




6.2.3       Allow its Affiliates,

directors, officers, employees, consultants and advisors to reproduce the

Confidential Information of the Disclosing Party only to the extent necessary

to effect the purposes set forth in this Agreement, with all such reproductions

being considered Confidential Information.




 




Each Party shall be responsible for any breaches of

this Section 6.2 by any of its Affiliates, directors, officers, employees,

consultants and advisors.




 




6.3          Exceptions. The

obligations of a Receiving Party under Section 6.2 above shall not apply to any

specific Confidential Information of the Disclosing Party to the extent that

the Receiving Party can demonstrate by competent proof that such Confidential

Information:




 




6.3.1       Was generally known to the

public or otherwise part of the public domain prior to the time of its

disclosure under this Agreement;




 




6.3.2       Entered the public domain after the time of its

disclosure under this Agreement through means other than an unauthorized

disclosure resulting from an act or




6





























[  **  ] This portion has been omitted based on a request for

confidential treatment pursuant to Rule 24b-2 of the Exchange Act.  The omitted portion has been separately

filed with the Commission.




 




omission by the Receiving Party or its Affiliates,

directors, officers, employees, consultants, advisors or agents;




 




6.3.3       Was independently developed

by the Receiving Party, without use of Confidential Information of the

Disclosing Party, prior to the time of disclosure by the Disclosing Party; or




 




6.3.4       Was disclosed to the

Receiving Party by a Third Party having no fiduciary relationship with the

Disclosing Party and having no obligation of confidentiality to the Disclosing

Party with respect to such Confidential Information; or




 




6.3.5       Is required to be disclosed

to comply with applicable laws or regulations (such as disclosure to the United

States Securities and Exchange Commission, the United States Environmental

Protection Agency, the United States Department of Energy, or the United States

Patent and Trademark Office, or to their foreign equivalents), or to comply

with a court or administrative order, provided that the Disclosing Party

receives prior written notice of such disclosure and that the Receiving Party

takes all reasonable and lawful actions to obtain confidential treatment for

such disclosure and, if possible, to minimize the extent of such disclosure.




 




6.4          Survival of Obligations.

The obligations set forth in Sections 6.1, 6.2, and 6.3 shall remain in effect

after termination or expiration of this Agreement for a period of five (5)

years.




 




6.5          Publicity. Enchira

shall not issue any press release or other public statement concerning the

existence or terms of this Agreement or any activities related hereto without

the written consent of [  **  ]. Notwithstanding the foregoing, Enchira

may disclose this Agreement or any activities related hereto without [  ** 

]’s approval if such approval has been requested but not received within

forty-eight (48) hours and Enchira reasonably concludes, after consulting with

its legal advisors, that it is required by law or regulatory or listing agency

to disclose the transaction or part thereof. [ 

**  ] shall be free to disclose a

portion or all of the terms of this Agreement without requiring the consent of

Enchira.




 




7.             REPRESENTATIONS,

WARRANTIES, AND DISCLAIMERS.




 




7.1          Organization; Good

Standing. Each Party hereby represents to the other Party on the Effective

Date and thereafter throughout the Term that, to the best of its knowledge, it

(a) is a corporation duly organized and validly existing, (b) is in good

standing under the laws of the jurisdiction of its incorporation, (c) is

qualified to do business and in good standing in each jurisdiction in which the

performance of its obligations hereunder requires such qualification and (d)

has all requisite power and authority, corporate or otherwise, and the legal

right to conduct its business as now being conducted, to own, lease and operate

its properties and to execute, deliver and perform under this Agreement.




 




7.2          Binding Obligation; Due

Authorization; No Conflict. Each Party hereby represents to the other Party

on the Effective Date and thereafter throughout the Term that,




 




7





























 




[  **  ] This portion has been omitted based on a request for

confidential treatment pursuant to Rule 24b-2 of the Exchange Act.  The omitted portion has been separately

filed with the Commission.




 




to the best of its knowledge, this Agreement is a legal and valid

obligation binding upon its execution and enforceable in accordance with its

terms and conditions. The execution, delivery and performance of this Agreement

by such Party have been duly authorized by all necessary corporate action, and

the person executing this Agreement on behalf of such Party has been duly

authorized to do so by all requisite corporate actions and do not and will not

(a) require any consent or approval of its stockholders or any Third Party or (b)

conflict with, or constitute a material breach or violation of, any agreement,

instrument, understanding, oral or written, to which it is a party or by which

it may be bound, and any judgment of any court, governmental body, or

arbitrator applicable to such a Party or (c) violate any law, decree, order,

rule or regulation of any court, governmental body or administrative or other

agency having authority over it.




 




7.3          No Suit. Enchira

hereby represents on the Effective Date, that it is aware of no action, suit or

inquiry or investigation contemplated or instituted by any Third Party that

questions or threatens the validity of this Agreement.




 




7.4          Title to Intellectual

Property Rights. Enchira hereby represents to [  **  ] that Enchira (i) is

the sole owner, free and clear of all liens and encumbrances, of the Assigned

Technology, (ii) has the right to grant the Sublicense, and (iii) has the right

to do all other things necessary for the purposes contemplated under this

Agreement.




 




7.5          No Violations of Third

Party Intellectual Property Rights. Enchira represents (a) that there are

no actions against it pending in any court of law or governmental agency (other

than prosecution of patents in the various patent offices in the world) of

infringement of valid patent rights of a Third Party and (b) that, to the best

of its knowledge, by conducting its obligations as currently proposed under

this Agreement, Enchira would not violate any of the intellectual property

rights of any Third Party.




 




7.6          No Unauthorized Use Necessary.

Enchira hereby represents to [  **  ] that, to the best of Enchira’s knowledge,

there is no material unauthorized use, infringement or misappropriation of any

of the Covered Technology by anyone.




 




7.7          No Other Third Party

Licenses To Assigned Technology. Enchira hereby represents to [  **  ]

that no Third Party licenses, or other right to title, use, sublicense or

otherwise acquire, the Assigned Technology exist.




 




7.8          Termination of

Agreements. The BDS Technology Agreement and the Umbrella Agreement, each

dated August 31, 1994 and in each case by and between Enchira and The M.W.

Kellogg Company, were terminated by Enchira on or before the Effective Date.

The Site License Agreement, dated March 6, 1998, by and between Enchira and

PetroStar, was terminated by Enchira and PetroStar on or before the Effective

Date.




 




7.9          No Warranties.

Except as expressly set forth in this Agreement, each Party hereby acknowledges

that the data and any materials to be provided by Enchira to [  **  ]

under this Agreement will be of an experimental nature, provided without

warranties, and Enchira shall not accept any liability in connection with their

use, storage and disposal by 




 




8





























 




[  **  ] This portion has been omitted based on a request for

confidential treatment pursuant to Rule 24b-2 of the Exchange Act.  The omitted portion has been separately

filed with the Commission.




 




[  **  ]. EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT, NEITHER PARTY

MAKES ANY REPRESENTATION OR WARRANTY TO THE OTHER PARTY OF ANY KIND, EXPRESS OR

IMPLIED, INCLUDING, WITHOUT LIMITATION, ANY WARRANTY OF NON­INFRINGEMENT,

MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR NON-INFRINGEMENT.

WITHOUT LIMITING THE GENERALITY OF THE FOREGOING, EACH PARTY ACKNOWLEDGES THAT

NO WARRANTY IS MADE REGARDING THE UTILITY OF ANY INFORMATION, MATERIALS OR

TECHNOLOGY PROVIDED HEREUNDER. EXCEPT AS EXPRESSLY SET FORTH HEREIN, EACH PARTY

EXPRESSLY DISCLAIMS ALL WARRANTIES AS TO THE VALIDITY OR SCOPE OF PATENTS AND

PATENT CLAIMS, ISSUED AND PENDING, PROTECTING ITS TECHNOLOGY OR THAT ANY

TECHNOLOGY WILL BE FREE FROM INFRINGEMENT OF PATENTS OR PROPRIETARY RIGHTS OF

THIRD PARTIES, OR THAT NO THIRD PARTIES ARE IN ANY WAY INFRINGING PATENT

RIGHTS.




 




7.10        Limitation of Liability.

EXCEPT FOR AMOUNTS PAYABLE UNDER SECTION 4.1 OR FOR LIABILITY FOR BREACH OF

CONFIDENTIALITY, IN NO EVENT WILL EITHER PARTY, ITS DIRECTORS, OFFICERS,

EMPLOYEES, AGENTS OR AFFILIATES BE LIABLE TO THE OTHER PARTY FOR ANY INDIRECT,

INCIDENTAL, SPECIAL, EXEMPLARY OR CONSEQUENTIAL DAMAGES, WHETHER BASED UPON A

CLAIM OR ACTION OF CONTRACT, WARRANTY, NEGLIGENCE, STRICT LIABILITY OR OTHER

TORT, OR OTHERWISE, ARISING OUT OF THIS AGREEMENT.




 




8.             INDEMNIFICATION.




 




8.1          Enchira shall indemnify,

defend, and hold harmless [  **  ] and its Affiliates and their directors,

officers, employees, and agents and their respective successors, heirs and

assigns (each an “Indemnitee”), against any liability, damage, loss, or expense

incurred by or imposed upon such persons or any one of them in connection with

any claims, settlements, suits, actions, demands, or judgments by any Third

Party arising from the pursuit of the purposes of this Agreement concerning (i)

any theory of product liability (including, but not limited to, actions in the

form of tort, warranty, or strict liability), (ii) any breach of the

representations and warranties made by Enchira to [  **  ] under this

Agreement, including, without limitation, in Sections 2.1 and 7.5 herein or

(iii) any and all claims by Maxygen, Inc. (or any successor-in-interest

thereto) that any of the Covered Technology licensed hereunder, or, any of the

Additional Materials or other materials provided by Enchira to [  **  ]

hereunder, includes, incorporates, or is based on, the RACHITTÔ process. None of [  **  ] and its Affiliates

and their directors, officers, employees, and agents and their respective

successors, heirs and assigns shall be entitled to indemnification for the

settlement of any claim pursuant to this Agreement unless it obtains the prior

written consent of Enchira to such settlement.




 




8.2          Any Indemnitee that

intends to claim indemnification under Section 8.1 shall promptly notify

Enchira of any claim in respect of which the Indemnitee intends to claim




 




9





























 




[  **  ] This portion has been omitted based on a request for

confidential treatment pursuant to Rule 24b-2 of the Exchange Act.  The omitted portion has been separately

filed with the Commission.




 




such indemnification, and Enchira shall assume the defense thereof with

counsel mutually satisfactory to the Parties; provided, however, that an

Indemnitee shall have the right to retain its own counsel, with the fees and

expenses of no more than the law firm representing all Indemnitees in the

proceeding or related proceeding, to be paid by Enchira, if representation of

such Indemnitee by the counsel retained by the Enchira would be inappropriate

due to actual or potential differing interests between such Indemnitee and any

other Party represented by such counsel in such proceedings. The indemnity

agreement in Section 8.1 shall not apply to amounts paid in settlement of any

loss, claim, liability or action if such settlement is effected without the

consent of the Enchira. The failure to deliver notice to Enchira within a

reasonable time after the commencement of any such action, shall not relieve

Enchira of any liability to the Indemnitee under Section 8.1, except to the

extent Enchira has been prejudiced by such failure to give notice. Each Party

and its Affiliates and their employees and agents shall cooperate fully with

the other Party and its legal representatives in the investigation of any

action, claim or liability covered by this indemnification.




 




9.             TERM AND TERMINATION.




 




9.1          Term. The term of

this Agreement will commence as of the Effective Date of this Agreement and,

unless sooner terminated as provided hereunder, will expire upon the expiration

of the last to expire of the patents included in the Sublicensed Patents (the

“Term”).




 




9.2          Mutual Consent. This

Agreement may be terminated at any time by mutual written agreement of the

Parties.




 




9.3          Default.




 




9.3.1       Notice of Default. In

the event any material representation or warranty made hereunder by either

Party shall be untrue (“Representation Default”) or upon any breach or default

of a material obligation of this Agreement by a Party (“Performance Default”),

the Party not in Default (“Non-Defaulting Party”) must first give the other

Party (“Defaulting Party”) written notice thereof (“Notice of Default”), which

notice must state the nature of the untruthfulness, breach or default in

reasonable detail and request the Defaulting Party cure such Default within

sixty (60) days.




 




9.3.2       Termination for Default.

The Non-Defaulting Party may, in addition to any other remedies which may be

available to such Non-Defaulting Party at law or equity, terminate this

Agreement in the event of (a) a Representation Default by the Defaulting Party

or (b) a Performance Default by the Defaulting Party; that has not been cured

within sixty (60) days after receipt of a Notice of Default; or, if such

Performance Default cannot be cured within such sixty (60) day period, and the

defaulting Party shall have failed to commence substantial remedial actions

within such sixty (60) day period and to diligently pursue the same.

Notwithstanding the foregoing, if a Representation or Performance Default is

not curable by its nature, the Non-Defaulting Party may immediately terminate

this Agreement with a Notice of Default to the Defaulting Party.




 




10





























 




[  **  ] This portion has been omitted based on a request for

confidential treatment pursuant to Rule 24b-2 of the Exchange Act.  The omitted portion has been separately

filed with the Commission.




 




9.4          Bankruptcy.




 




9.4.1       A Party may terminate this

Agreement if, during the Term, the other Party shall file in court or agency

pursuant to any statute or regulation of any state or country, a petition in

bankruptcy or insolvency or for reorganization or for an arrangement or for the

appointment of a receiver or trustee of the Party or of its assets, or if the

other Party proposes a written agreement of composition or extension of its

debts, or if the other Party shall be served with an involuntary petition in

bankruptcy or seeking reorganization, liquidation, dissolution, winding-up

arrangement, composition or readjustment of its debts or any other relief under

any bankruptcy, insolvency, reorganization or other similar act or law of any

jurisdiction now or hereafter in effect, or there shall have been issued a

warrant of attachment, execution or similar process against it, filed in any

insolvency proceeding, and such petition shall not be dismissed within ninety

(90) days after the filing thereof, or if the other Party shall propose or be a

Party to any dissolution or liquidation, or if the other Party shall make an

assignment for the benefit of creditors.




 




9.4.2       All rights and licenses

granted under or pursuant to this Agreement are, and shall otherwise be deemed

to be, for purposes of Section 365(n) of the U.S. Bankruptcy Code, licenses of

rights to “intellectual property” as defined under Section 101 of the U.S.

Bankruptcy Code. The Parties agree that each Party that is a licensee of such

rights under this Agreement shall retain and may fully exercise its rights and

elections under the U.S. Bankruptcy Code. The Parties further agree that, in

the event of the commencement of a bankruptcy proceeding by or against either

Party under the U.S. Bankruptcy Code, the Party hereto which is not a Party to

such proceeding shall be entitled to a complete duplicate of (or complete

access to, as appropriate) any such intellectual property and all embodiments

of such intellectual property, and same, if not already in their possession,

shall be, within ten (10) days of the commencement of such proceeding,

delivered to them (i) upon any such commencement of a bankruptcy proceeding

upon their written request therefore, unless the Party subject to such

proceeding (or a trustee on behalf of the subject Party) elects to continue to

perform all of its obligations under this Agreement or (ii) if not delivered

under (i) above, upon the rejection of this Agreement by or on behalf of the

Party subject to such proceeding upon written request therefor by the

non-subject Party.




 




9.5          Disposition of

Confidential Information. In the event of termination of this Agreement,

each Receiving Party shall return or destroy all forms of Confidential

Information provided to such Receiving Party by a Disclosing Party under this

Agreement within thirty (30) days after such termination or expiration,

provided, however, that a Receiving Party may retain one copy of such

Confidential Information for the sole purpose of use in any litigation

resulting from this Agreement or the activities undertaken pursuant to this

Agreement.




 




9.6          Effect of Termination or

Expiration. Termination or expiration of this Agreement shall not relieve

the Parties of any obligation accruing prior to such termination or expiration

and shall not terminate any sublicense granted prior to such termination or

expiration pursuant to Section 3.2. Except as otherwise provided herein, the

provisions of




 




11





























 




[  **  ] This portion has been omitted based on a request for

confidential treatment pursuant to Rule 24b-2 of the Exchange Act.  The omitted portion has been separately

filed with the Commission.




 




Articles 1, 3, 6, 8, 10 and 11 and of Sections 5.1, 5.2, 7.9, 7.10 and

9.5 shall survive the expiration or termination of this Agreement.




 




10.       DISPUTES.  Any dispute under this Agreement shall be finally decided in the

appropriate court of law or equity. 

Except as otherwise expressly provided in this Agreement, each Party

shall bear its own costs, attorneys’ and witness’ fees and court fees incurred

in connection with the litigation.




 




11.          MISCELLANEOUS.




 




11.1        Relationship of Parties.

It is expressly agreed that [  **  ] and Enchira shall be independent

contractors and that nothing in this Agreement is intended or shall be deemed

to constitute a partnership, agency, distributorship, employer-employee or

joint venture relationship between the Parties. No Party shall incur any debts

or make any commitments for the other, except to the extent, if at all,

specifically provided herein.




 




11.2        Governing Law.   This Agreement shall be governed by and construed in accordance

with the laws of the State  of [  **  ] without regard to those provisions

governing conflicts of law.




 




11.3        Binding Effect. This

Agreement and all rights and obligations hereunder shall inure to the benefit

of and be binding upon the Parties, their affiliates, and their respective

lawful successors and assigns (including, without limitation, any successor to

a Party upon a change of control).




 




11.4        Notices. All notices,

requests, demands and other communications required or permitted to be given

pursuant to this Agreement shall be in writing and shall be deemed to have been

duly given upon the date of receipt if delivered by hand, recognized

international overnight courier or confirmed facsimile transmission to the

following addresses or facsimile numbers:




 




	

  If to Enchira:


  	

   


  	

  If to [  ** 

  ]:


  
	

  Enchira Biotechnology

  Corporation


  	

   


  	

  [  **  ]


  
	

  4200 Research Forest Drive


  	

   


  	

  [  **  ]


  
	

  The Woodlands, TX 77381


  	

   


  	

  [  **  ]


  
	

  Attention:    Paul Brown


  	

   


  	

  [  **  ]


  
	

   


  	

   


  	

   


  
	

  Tel: (281) 364-6100


  	

   


  	

  Tel: [  **  ]


  
	

  Fax: (281) 364-6112


  	

   


  	

  Fax: [  **  ]


  
	

   


  	

   


  	

   


  
	

  with a copy to:


  	

   


  	

  with a copy to:


  
	

   


  	

   


  	

   


  
	

  Andrews

  & Kurth L.L.P.


  	

   


  	

  [  **  ]


  
	

  Waterway Plaza Two, Suite 200


  	

   


  	

  [  **  ]


  
	

  10001 Woodloch Forest Drive


  	

   


  	

  [  **  ]


  
	

  The Woodlands, TX 77380


  	

   


  	

   


  
	

  Attention: Jeffrey R. Harder


  	

   


  	

  [  **  ]


  
	

   


  	

   


  	

   


  
	

  Tel: (713) 220-4312


  	

   


  	

  Tel: [  **  ]


  
	

  Fax: (713)238-7282


  	

   


  	

  Fax: [  **  ]


  





 




12





























 




[  **  ] This portion has been omitted based on a request for

confidential treatment pursuant to Rule 24b-2 of the Exchange Act.  The omitted portion has been separately

filed with the Commission.




 




Either Party may change its designated address and

facsimile number by notice to the other Party in the manner provided in this

Section.




 




11.5        Amendment and Waiver.

This Agreement may be amended, supplemented, or otherwise modified only by

means of a written instrument signed by both Parties. Any waiver of any rights

or failure to act in a specific instance shall relate only to such instance and

shall not be construed as an agreement to waive any rights or fail to act in

any other instance, whether or not similar.




 




11.6        Severability. In the

event that any provision of this Agreement shall, for any reason, be held to be

invalid or unenforceable in any respect, such invalidity or unenforceability

shall not affect any other provision hereof, and the Parties shall negotiate in

good faith to modify the Agreement to preserve (to the extent possible) their

original intent.




 




11.7        Third Parties. Nothing

in this Agreement, express or implied, is intended to confer upon any party,

including Petro Star, other than the Parties hereto and their respective

successors and permitted assigns, any rights, remedies, obligations or

liabilities under or by reason of this Agreement.




 




11.8        Entire Agreement.

Subject to any applicable provisions of the mutual Confidential Disclosure

Agreement between the Parties executed on February 13, 1996 (which agreement

references the former names of [ 

**  ] and Enchira, namely,

Recombinant Biocatalysis, Inc. and Energy Biosystems Corp., respectively) and

the mutual Confidentiality and Non-Disclosure Agreement between Enchira, [  ** 

], and Petro Star executed on February 21, 2001, that do not contradict

the terms of this Agreement, this Agreement and the exhibits hereto constitute

the entire agreement between the Parties with respect to the subject matter

hereof and supersede all prior and contemporaneous agreements, representations,

and understandings of the Parties. No Party hereto shall be liable or bound to

the other in any manner by any warranties, representations or covenants with

respect to the subject matter hereof except as specifically set forth herein.




 




11.9        Counterparts. This

Agreement may be executed via facsimile and 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, and shall become effective when there

exist copies hereof which, when taken together, bear the authorized signatures

of each of the Parties hereto. Only one such counterpart signed by the Party

against whom enforceability is sought needs to be produced to evidence the

existence of this Agreement.




 




11.10      Titles and Subtitles; Form

of Pronouns; Construction and Definitions. The titles of the sections and

paragraphs of this Agreement are for convenience only and are not to be

considered in construing this Agreement. All pronouns used in this Agreement

shall be deemed to include masculine, feminine and neuter forms, the singular

number




 




13





























 




[  **  ] This portion has been omitted based on a request for

confidential treatment pursuant to Rule 24b-2 of the Exchange Act.  The omitted portion has been separately

filed with the Commission.




 




includes the plural and the plural number includes the singular. Unless

the context otherwise requires, the term “including” shall mean “including,

without limitation.”




 




11.11      No Assignment; Binding

Effect. Except as expressly permitted herein, neither Party may assign any

of its rights, duties and obligations under this Agreement without the express

written consent of the other Party, which may be given or withheld, as the case

may be, in the other Party’s sole and absolute discretion, except a Party may

make such an assignment without such consent to a successor to substantially

all of the business of such Party to which this Agreement pertains, whether in

merger, sale of stock, sale of assets or other transaction; provided that in

event of such transaction, intellectual property rights of a party to such

transaction other than one of the Parties shall not be included in the

technology sublicensed hereunder. This Agreement and all rights and obligations

hereunder shall inure to the benefit of and be binding upon the Parties, their

affiliates, and their respective lawful successors and assigns (including,

without limitation, any successor to a Party upon a change of control).




 




(signature page follows)




 




14





























 




[  **  ] This portion has been omitted based on a request for

confidential treatment pursuant to Rule 24b-2 of the Exchange Act.  The omitted portion has been separately filed

with the Commission.




 




IN WITNESS WHEREOF, the undersigned have duly executed

and delivered this Agreement as a sealed instrument effective as of the date

first above written.




 




	

   


  	

  [  **  ]


  
	

   


  	

   


  
	

   


  	

   


  
	

   


  	

  By:


  	

  [  **  ]


  	

   


  
	

   


  	

  Name: 


  	

  [  **  ]


  	 

	

   


  	

  Title: President and Chief Executive Officer


  
	

   


  	

   


  
	

   


  	

  ENCHIRA BIOTECHNOLOGY CORPORATION


  
	

   


  	

   


  
	

   


  	

   


  
	

   


  	

  By:


  	

  /s/  Daniel J. Monticello


  	

   


  	 

	

   


  	

  Name: Daniel J. Monticello


  
	

   


  	

  Title: Vice President, Research & Development


  
								





 




15





























 




The schedules attached as

part of this agreement have been omitted.




 




16