exv10w27w1






Exhibit 10.27.1




***Text Omitted and Filed Separately

Confidential Treatment Requested

Under 17 C.F.R. §§ 200.80(b)(4) and 203.406




FIRST AMENDMENT TO LICENSE AGREEMENT No. A4780




     This Agreement, effective May 31, 2011, is between the University of Florida Research
Foundation, Inc., a not-for-profit corporation duly organized and existing under the laws of the
State of Florida and having its principal office at 223 Grinter Hall, Gainesville, Florida 32611
U.S.A. (hereinafter referred to as “UFRF”), and Myriant Technologies Inc, a company duly
recognized under the laws of the State of Delaware, and having its principal office at 2
Batterymarch Park, Suite 301, Quincy, MA 02169 (hereinafter referred to as “Assignee”).



     WHEREAS, UFRF and BioEnergy International LLC, a company duly organized under the laws of the
State of Delaware, and having its principal office at 2 Batterymarch Park, Suite 301, Quincy, MA
02169 (hereinafter referred to as “Licensee”) entered into a license agreement No. A4779 effective
October 3, 2005, (hereinafter “License Agreement”);



     WHEREAS, UFRF consented to the assignment of the License Agreement from Licensee to Myriant
Technologies Inc, a company duly recognized under the laws of the State of Delaware, and having its
principal office at 2 Batterymarch Park, Suite 301, Quincy, MA 02169 on July 10, 2009;



     WHEREAS, Myriant Technologies LLC has undergone a conversion from a Delaware LLC to a Delaware
Corporation now known as Myriant Technologies Inc (“Assignee”) and having its principal office at 2
Batterymarch Park, Suite 301, Quincy, MA 02169;



     WHEREAS, UFRF and Assignee (collectively “the Parties”) now wish to amend certain terms of the
License Agreement;



     NOW THEREFORE, in consideration of the mutual covenants and agreement set forth below, the
Parties hereby amend the License Agreement as follows:



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	1.	 	Section 1.4 of the License Agreement is replaced in its entirety with the following:






	 	1.4	 	“Net Sales” shall mean the amount invoiced on sales of Licensed
Product and/or Licensed Processes by Licensee or Sublicensee after deducting,
if not already deducted in the amount invoiced;






	 	•	 	Trade and/or quantity discounts
	 
	 	•	 	Credits on returns and allowances
	 
	 	•	 	Outbound transportation costs paid






	 	 	 	“Net Sales” shall not include the transfer of reasonable quantities of a
Licensed Product to an Affiliate or Third Party for promotional purposes
without charge. For the purpose of calculations of royalty payment, the Net
Sales is not determined on the basis of output from the individual plants
but it is based on the aggregated annual production of Licensed Product from
all the manufacturing plants owned and, or operated either by Licensee or
Sublicensee(s) throughout the world during that year.






	2.	 	Section 1.6 of the License Agreement is replaced in its entirety with the following:






	 	1.6	 	The term “Sublicensee” shall mean any Affiliate or Third Party
to whom Licensee confers the right to make, use or sell Licensed Product and/or
Licensed Processes.






	3.	 	A new Section 1.11 with the following text is added to the License Agreement:






	 	1.11	 	“Third Party” shall mean any person or entity other than a
Party to this Agreement or an Affiliate of a Party to this Agreement.






	4.	 	Sub-section 2.1.1 of the License Agreement is replaced in its entirety with the following:






	 	2.1.1	 	License Under Licensed Patents






	 	 	 	UFRF hereby grants to Licensee an exclusive license, limited to the Licensed
Field and the Licensed Territory, under the Licensed Patents, to make, have
made, use and sell Licensed Products and/or to practice Licensed Processes.
This grant of exclusive license shall allow the making, using and selling of
Licensed Products and/or the practice of





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	 	 	 	Licensed Processes by tolling facilities owned and operated by third parties
under a written agreement with the Licensee or Sublicensee. UFRF reserves
to itself and the University of Florida the right to make and use Licensed
Products and/or Licensed Processes solely for their internal research,
clinical, and educational purposes. In addition, UFRF reserves to itself,
as well as to the University of Florida and to all non-profit research
institutions (which other non-profit research institutions shall have no
right to grant further sublicenses), the right to use materials that might
be covered under Licensed Patents solely for their internal research,
educational, and clinical purposes and to meet all applicable governmental
requirements governing the ability to transfer materials.






	5.	 	Sub-section 2.2.1 of the License Agreement is replaced in its entirety with the following:






	 	2.2.1.	 	Licensee may grant written Sublicenses to Affiliates on prior notice to UFRF.
Licensee may grant written Sublicenses to Third Parties subject to UFRF prior
review and consent which review and consent shall not be unreasonably withheld
or delayed. Any agreement granting a Sublicense shall state that the
Sublicense is subject to the termination provisions as defined in Section 9.8
of this Agreement. Licensee shall have the same responsibility for the
activities of any Sublicensee as if the activities were directly those of
Licensee.






	6.	 	Sub-section 2.2.2 of the License Agreement is replaced in its entirety with the following:






	 	2.2.2	 	In respect to Sublicenses granted by Licensee under Section
2.2.1, Licensee shall pay a royalty on Net Sales according to Section 4.2.1.
In addition, Licensee shall pay UFRF (subject to Permitted Deductions provided
that fair and commercially reasonable sublicense fees are paid to UFRF in
conjunction with such transaction) [...***...] of any fees or other payments in
consideration for any rights granted under a sublicense and such payments are
not based directly upon the amount or value of Licensed Products sold by
Sublicensee (Fees) up to [...***...]; [...***...] of any Fees between
[...***...] and [...***...]; and [...***...] of Fees above [...***...].
Licensee shall not receive from Sublicensee anything of value in lieu of cash
payments in consideration for any Sublicense under this Agreement without the
express prior written permission of UFRF.






	7.	 	Sub-section 2.2.3 of the License Agreement is replaced in its entirety with the following:





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	 	2.2.3	 	“Permitted Deductions” means: (i) funds received as
consideration for equity purchases of Licensee’s securities by a Sublicensee at
the fair market value of such equities, (ii) payments received by Licensee from
any Sublicensee for purposes of paying Licensee for any future research
requested by the Sublicensee, for development, testing, or engineering services
actually undertaken by or for Licensee related to any Licensed Product or
Licensed Process. For greater clarity, payment by a Sublicensee for future
research expenses incurred by or for Licensee after the Effective Date for
research which has not been requested by Sublicensee and has been conducted by
Licensee as Licensee diligent pursuit of the Licensed Patents shall not be
considered a Permitted Deduction.






	8.	 	Sub-sections 3.1.2 and 3.1.3 (Development) of the License Agreement are replaced in their
entirety with the following:






	 	3.1.2.	 	Licensee agrees that the first commercial sale of one or more products to the
customer shall occur on or before January 31, 2016 or UFRF shall have the right
to terminate the Agreement pursuant to Section 9.4 hereto. In addition,
Licensee will meet the milestones shown in Appendix D or UFRF shall have the
right to terminate the Agreement pursuant to Section 9.4. Licensee will notify
in writing as each milestone is met.
	 
	 	3.1.3	 	Licensee agrees that three years after the Effective Date of
this First Amendment the Licensee would have achieved one of the following
milestones: a) Completion of at least one sublicense for rights under the
Licensed Patents or Licensed Process or b) Production of 10 Kilogram sample
quantities of the Licensed Products by the Licensee. If neither of these
milestones is met by the License, then the Licensee shall pay UFRF [...***...]
for a one-time, non-refundable, 2-year extension to meet either milestone.
Failure to meet either milestone after the 2-year extension is a material
breach of this Agreement and grounds for termination pursuant to Section 9.3
hereto.






	9.	 	Sub-sections 4.2.1 of the License Agreement is replaced in its entirety with the following:






	 	4.2.1	 	Royalty on Licensed Patents. In addition to other
payments required by this Agreement, Licensee agrees to pay to UFRF as earned
royalties a royalty calculated as a percentage of Net Sales of Licensed
Products which, if not for this Agreement, would infringe Licensed Patents.
The royalty is deemed earned as of the earlier of the date the Licensed Product
and or Licensed Process is actually sold and paid (or the date an invoice is





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	 	 	 	sent by Licensee or its Sublicensee(s). For each calendar year or partial
calendar year during the term of this Agreement, Licensee shall pay
royalties at the following rates based on the aggregate annual production of
Licensed Products for all manufacturing by or on behalf of Licensee and
Sublicensee(s): [...***...] of aggregate Net Sales for the first [...***...]
pounds of Licensed Product during each calendar year; [...***...] of
aggregate Net Sales between [...***...] and [...***...] pounds of Licensed
Product during each calendar year, and [...***...] of aggregate Net Sales
over [...***...] pounds of Licensed Product during each calendar year.






	10.	 	Sub-section 4.3.1 of the License Agreement is replaced in its entirety with the following:






	 	4.3.1	 	Licensee agrees to pay UFRF an annual License Maintenance Fee
of [...***...] every year until Licensed Product is commercialized. The first
License Maintenance Fee shall be due on June 30, 2011. The License Maintenance
Fee shall be payable within thirty (30) days of June 30 in each subsequent year
until commercial sales of Licensed Product. Following commercialization of
Licensed Product a Minimum Royalty payment of [...***...] shall be due for the
life of this Agreement. The Minimum royalty shall be paid in advance on a
quarterly basis for each year in which this agreement is in effect. The first
Minimum Royalty payment shall be due in the first quarter following first
commercial sales and shall be in amount of [...***...]. The Minimum Royalty for
a given year shall be due in advance and shall be paid in quarterly
installments on March 31, June 30, September 30, and December 31 for the
following quarter. Any Minimum Royalty paid in a calendar year will be credited
against the earned royalties for that calendar year. It is understood that the
Minimum Royalties will be applied to earned royalties on a calendar year basis,
and that sales of Licensed Products and/or Licensed Processes requiring the
payment of earned royalties made during a prior or subsequent calendar year
shall have no effect on the annual Minimum Royalty due UFRF for other than the
same calendar year in which the royalties were earned.






	11.	 	Sub-section 8.3 of the License Agreement is replaced in its entirety with the following:






	 	8.3	 	UFRF shall diligently strive to make a decision on whether UFRF
will bring an infringement action against the alleged infringer within thirty
(30)





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	 	 	 	days of being notified of any alleged infringement. If within seventy five
(75) days after having been notified of any alleged infringement, UFRF shall
have been unsuccessful in persuading the alleged infringer to desist and
shall not have brought an infringement action against the alleged infringer,
or if UFRF shall notify Licensee at any time prior thereto of its intention
not to bring suit against the alleged infringer, then, and in those events
only, Licensee shall have the right, but shall not be obligated, to
prosecute at its own expense any infringement of the Licensed Patents, and
Licensee may, for such purposes, use the name of UFRF as party plaintiff. No
settlement, consent judgment or other voluntary final disposition of the
suit may be entered into without the consent of UFRF, which consent shall
not be unreasonably withheld. Licensee shall indemnify UFRF against any
order for costs that may be made against UFRF in such proceedings.






	12.	 	Sub-section 8.4 of the License Agreement is replaced in its entirety with the following:






	 	8.4	 	In the event that Licensee shall undertake the enforcement by
litigation and/or defense of the Licensed Patents by litigation, any recovery
of damages by Licensee for any such suit shall be applied first in satisfaction
of any reasonable expenses and legal fees of Licensee relating to the suit, and
next toward reimbursement of UFRF for any legal fees, and unreimbursed
expenses. The balance remaining from any such recovery shall be divided in the
ratio of [...***...] to Licensee and [...***...] to UFRF. In the event that
UFRF shall undertake the enforcement by litigation and/or defense of the
Licensed Patents by litigation, any recovery of damages by UFRF for any such
suit shall be applied first in satisfaction of any reasonable expenses and
legal fees of UFRF relating to the suit, and next toward reimbursement of
Licensee for any legal fees, and unreimbursed expenses. The balance remaining
from any such recovery shall be divided in the ratio of [...***...] to UFRF and
[...***...] to Licensee.






	13.	 	The provisions of Section 10 of the License Agreement is replaced in its entirety with the
following:






	 	10.	 	Assignability





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	 	 	 	This Agreement may be transferred or assigned by Licensee to an Affiliate of
Licensee on prior notice to UFRF; provided, however, that Licensee shall remain
liable to UFRF for the performance by such Affiliates of its obligations hereunder.
The agreement may not be transferred or assigned to a Third Party by Licensee except
with the prior written consent of UFRF and UFRF will not withhold such a written
consent unreasonably. Licensee will provide to UFRF a copy of any documents that
assign its rights and obligations to an Affiliate or another entity.






	14.	 	The Appendix A — Development Plan of the License Agreement is replaced in its entirety with
the following:
	 
	 	 	Myriant Technologies will focus on the development of biocatalyst for the commercial
production of acetic acid. Unlike the currently used biocatalysts which use glucose as a
substrate in a rich medium, Myriant seeks to develop biocatalysts that efficiently utilize
all of the sugar constituents found in the carbohydrate polymer of plant biomass.






	 	Year I (2011)
	 
	 	 	 	Develop biocatalyst that can produce acetic acid in minimal salt medium.
Replace the yeast extract in the current growth medium with less expensive
substitutes such as molasses, corn steep liquor, and a mixture of vitamins
and minerals.
	 
	 	Year II (2012)
	 
	 	 	 	Test the ability of the biocatalyst to grow in a cellulosic hydrolysate and
the ability of the biocatalyst to grow in the non-detoxified cellulosic
hydrolysate.
	 
	 	Year III (2013)
	 
	 	 	 	Identify the fermentation conditions that would allow the production of
acetic acid in a cost-effective commercial scale.






	15.	 	The APPENDIX D — Milestones of the License Agreement is replaced in its entirety with
the following:






	 	 	In addition to the research milestones described in Appendix A, the following milestones
shall be completed by the Licensee.






	 	1.	 	By January 31, 2014, Licensee will provide UFRF a detailed document covering
Licensee’s plan as to projected product development, markets, and sales forecasts,





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	 	 	 	manufacturing and operations, and financial forecasts until at least [...***...] in
aggregate Net Sales is achieved (“Business Plan”). UFRF will treat this Business
Plan as confidential information according to Section 18 of the Agreement.
	 
	 	2.	 	By January 31, 2016, Licensee will have a first sale of Licensed Product.
	 
	 	16.	 	All other provisions of the License Agreement shall remain in full force and
effect and unmodified by this amendment.
	 
	 	17.	 	The amendment shall be executed in duplicate and shall be referred to as the
First Amendment to License Agreement No. A4780.




IN WITNESS WHEROF, the PARTIES hereto have duly executed this First Amendment to the License
Agreement on the dates indicated below.




	 	 	 	 	 
	University of Florida Research Foundation, Inc.

 	 
	By  	/s/ David L. Day
 	    DATE: May 26, 2011 
	 	 	David L. Day 	 
	 	 	Director, Office of Technology Licensing 	 
	 
	Myriant Technologies Inc.

 	 
	By   	/s/ Stephen J. Gatto
 	   DATE: May 31, 2011 
	 	Stephen J. Gatto 	 
	 	Chief Executive Officer 	 
	 



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