Common use of Assignments and Licenses Clause in Contracts

Assignments and Licenses. 2.1 Gilead hereby sells and assigns to Isis all of Gilead's right, title and interest in Patent Rights, subject to the rights of Glaxo Wellcome Inc. ("Glaxo") under the Collaborative Research Agreement between Glaxo and Gilead dated March 25, 1996 (the "Glaxo Agreement"), provided however, that the assignment of U.S. Patent Number 5,256,775 shall be subject to the condition precedent that Gilead settle the interference involving this patent on conditions of Gilead's choosing (including conceding priority). Gilead hereby grants Isis an exclusive, royalty-free, worldwide, assignable license (with the right to grant sublicenses) to U.S. Patent Number 5,256,775 beginning on the Effective Date and continuing until such time that Gilead settles the interference and the assignment to Isis becomes effective. 2.2 Gilead hereby assigns and delegates to Isis (and Isis accepts and agrees to perform) all of Gilead's rights and obligations under the License Agreement between Xxxx Research Corporation ("Xxxx Research") and Gilead dated January 1, 1994 and amended on November 19, 1996. A copy of the written consent to such assignment and delegation signed by Xxxx Research is attached hereto as Exhibit B. In the event that Isis, by reason of this Agreement, is required to indemnify Xxxx Research under Section 8.1 (b) of the Xxxx Research License Agreement, Gilead will indemnify Isis up to a maximum amount equal to one hundred percent (100%) of total royalties received by Gilead from Xxxx Research; thereafter, Gilead will not have any indemnity obligations to Isis related to such Agreement. Gilead will continue to honor its obligations to Xxxx Research for activities preceding the Effective Date of this Agreement. 2.3 Subject to the rights of Xxxx Research above, Isis hereby grants to Gilead an exclusive, perpetual, irrevocable, royalty-free, worldwide, assignable license (with the right to grant sublicenses) to directly or indirectly make, have made, use, import, export or sell compounds and other subject matter falling within the scope of Patent Rights which are [***] 2.4 Gilead hereby grants to Isis a nonexclusive, perpetual, royalty-free, worldwide, assignable license (with the right to grant sublicenses) to compounds and other subject matter which are within the scope of Patent Rights, solely for use as intermediates in the manufacture of Codeblocker Compounds or oligomers [***] 2.5 Isis hereby grants to Gilead a non-exclusive, non-sublicensable, non-assignable, perpetual, irrevocable, royalty-free, worldwide license under Patent Rights to make and use Codeblocker Compounds and Oligonucleotide Delivery Systems for internal research purposes, but not for any commercial purpose. 2.6 Isis will not have any obligations to Gilead relating to Codeblocker Compounds or this Agreement to the extent arising prior to the Effective Date. - ---------------------- [***] = CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. 2.7 Each party hereby agrees to execute such documents and to take such other actions as shall be necessary or appropriate to effectuate the assignments and licenses set forth in this Section 2.

Assignments and Licenses. 2.1 Gilead hereby sells and assigns to Isis all of Gilead's right, title and interest in Patent Rights, subject to the rights of Glaxo Wellcome Inc. ("Glaxo") under the Collaborative Research Agreement between Glaxo and Gilead dated March 25, 1996 (the "Glaxo Agreement"), provided however, that the assignment of U.S. Patent Number 5,256,775 shall be subject to the condition precedent that Gilead settle the interference involving this patent on conditions of Gilead's choosing (including conceding priority). Gilead hereby grants Isis an exclusive, royalty-free, worldwide, assignable license (with the right to grant sublicenses) to U.S. Patent Number 5,256,775 beginning on the Effective Date and continuing until such time that Gilead settles the interference and the assignment to Isis becomes effective. 2.2 Gilead hereby assigns and delegates to Isis (and Isis accepts and agrees to perform) all of Gilead's rights and obligations under the License Agreement between Xxxx Research Corporation ("Xxxx Research") and Gilead dated January 1, 1994 and amended on November 19, 1996. A copy of the written consent to such assignment and delegation signed by Xxxx Research is attached hereto as Exhibit B. In the event that Isis, by reason of this Agreement, is required to indemnify Xxxx Research under Section 8.1 (b) of the Xxxx Research License Agreement, Gilead will indemnify Isis up to a maximum amount equal to one hundred percent (100%) of total royalties received by Gilead from Xxxx Research; thereafter, Gilead will not have any indemnity obligations to Isis related to such Agreement. Gilead will continue to honor its obligations to Xxxx Research for activities preceding the Effective Date of this Agreement. 2.3 Subject to the rights of Xxxx Research above, Isis hereby grants to Gilead an exclusive, perpetual, irrevocable, royalty-free, worldwide, assignable license (with the right to grant sublicenses) to directly or indirectly make, have made, use, import, export or sell compounds and other subject matter falling within the scope of Patent Rights which are [***] 2.4 Gilead hereby grants to Isis a nonexclusive, perpetual, royalty-free, worldwide, assignable license (with the right to grant sublicenses) to compounds and other subject matter which are within the scope of Patent Rights, solely for use as intermediates in the manufacture of Codeblocker Compounds or oligomers [***] 2.5 Isis hereby grants to Gilead a non-exclusive, non-sublicensable, non-assignable, perpetual, irrevocable, royalty-free, worldwide license under Patent Rights to make and use Codeblocker Compounds and Oligonucleotide Delivery Systems for internal research purposes, but not for any commercial purpose. 2.6 Isis will not have any obligations to Gilead relating to Codeblocker Compounds or this Agreement to the extent arising prior to the Effective Date. - ---------------------- [***] = CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. 2.7 Each party hereby agrees to execute such documents and to take such other actions as shall be necessary or appropriate to effectuate the assignments and licenses set forth in this Section 2.

Assignments and Licenses. 2.1 Gilead hereby sells and assigns to Isis all of Gilead's right, title and interest in Patent Rights, subject to the rights of Glaxo Wellcome Inc. ("Glaxo") under the Collaborative Research Agreement between Glaxo and Gilead dated March 25, 1996 (the "Glaxo Agreement"), provided however, that the assignment of U.S. Patent Number 5,256,775 shall be subject to the condition precedent that Gilead settle the interference involving this patent on conditions of Gilead's choosing (including conceding priority). Gilead hereby grants Isis an exclusive, royalty-free, worldwide, assignable license (with the right to grant sublicenses) to U.S. Patent Number 5,256,775 beginning on the Effective Date and continuing until such time that Gilead settles the interference and the assignment to Isis becomes effective. 2.2 Gilead hereby assigns and delegates to Isis (and Isis accepts and agrees to perform) all of Gilead's rights and obligations under the License Agreement between Xxxx Research Corporation ("Xxxx Research") and Gilead dated January 1, 1994 and amended on November 19, 1996. A copy of the written consent to such assignment and delegation signed by Xxxx Research is attached hereto as Exhibit B. In the event that Isis, by reason of this Agreement, is required to indemnify Xxxx Research under Section 8.1 (b) of the Xxxx Research License Agreement, Gilead will indemnify Isis up to a maximum amount equal to one hundred percent (100%) of total royalties received by Gilead from Xxxx Research; thereafter, Gilead will not have any indemnity obligations to Isis related to such Agreement. Gilead will continue to honor its obligations to Xxxx Research for activities preceding the Effective Date of this Agreement. 2.3 Subject to the rights of Xxxx Research above, Isis hereby grants to Gilead an exclusive, perpetual, irrevocable, royalty-free, worldwide, assignable license (with the right to grant sublicenses) to directly or indirectly make, have made, use, import, export or sell compounds and other subject matter falling within the scope of Patent Rights which are [***] 2.4 Gilead hereby grants to Isis a nonexclusive, perpetual, royalty-free, worldwide, assignable license (with the right to grant sublicenses) to compounds and other subject matter which are within the scope of Patent Rights, solely for use as intermediates in the manufacture of Codeblocker Compounds or oligomers [***] 2.5 Isis hereby grants to Gilead a non-exclusive, non-sublicensable, non-assignable, perpetual, irrevocable, royalty-free, worldwide license under Patent Rights to make and use Codeblocker Compounds and Oligonucleotide Delivery Systems for internal research purposes, but not for any commercial purpose. 2.6 Isis will not have any obligations to Gilead relating to Codeblocker Compounds or this Agreement to the extent arising prior to the Effective Date. - ---------------------- ------------------------ [***] = CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. ]=CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.REQUESTED 2.7 Each party hereby agrees to execute such documents and to take such other actions as shall be necessary or appropriate to effectuate the assignments and licenses set forth in this Section 2.

Assignments and Licenses. 2.1 Gilead hereby sells and assigns to Isis all of Gilead's right, title and interest in Patent Rights, subject to the rights of Glaxo Wellcome Inc. ("Glaxo") under the Collaborative Research Agreement between Glaxo and Gilead dated March 25, 1996 (the "Glaxo Agreement"), provided however, that the assignment of U.S. Patent Number 5,256,775 shall be subject to the condition precedent that Gilead settle the interference involving this patent on conditions of Gilead's choosing (including conceding priority). Gilead hereby grants Isis an exclusive, royalty-free, worldwide, assignable license (with the right to grant sublicenses) to U.S. Patent Number 5,256,775 beginning on the Effective Date and continuing until such time that Gilead settles the interference and the assignment to Isis becomes effective. 2.2 Gilead hereby assigns and delegates to Isis (and Isis accepts and agrees to perform) all of Gilead's rights and obligations under the License Agreement between Xxxx Research Corporation ("Xxxx Research") and Gilead dated January 1, 1994 and amended on November 19, 1996. A copy of the written consent to such assignment and delegation signed by Xxxx Research is attached hereto as Exhibit B. In the event that Isis, by reason of this Agreement, is required to indemnify Xxxx Research under Section 8.1 (b) of the Xxxx Research License Agreement, Gilead will indemnify Isis up to a maximum amount equal to one hundred percent (100%) of total royalties received by Gilead from Xxxx Research; thereafter, Gilead will not have any indemnity obligations to Isis related to such Agreement. Gilead will continue to honor its obligations to Xxxx Research for activities preceding the Effective Date of this Agreement. 2.3 Subject to the rights of Xxxx Research above, Isis hereby grants to Gilead an exclusive, perpetual, irrevocable, royalty-free, worldwide, assignable license (with the right to grant sublicenses) to directly or indirectly make, have made, use, import, export or sell compounds and other subject matter falling within the scope of Patent Rights which are [***[ * ]. 2.4 Gilead hereby grants to Isis a nonexclusive, perpetual, royalty-free, worldwide, assignable license (with the right to grant sublicenses) to compounds and other subject matter which are within the scope of Patent Rights, solely for use as intermediates in the manufacture of Codeblocker Compounds or oligomers [***[ * ]. 2.5 Isis hereby grants to Gilead a non-exclusive, non-sublicensable, non-assignable, perpetual, irrevocable, royalty-free, worldwide license under Patent Rights to make and use Codeblocker Compounds and Oligonucleotide Delivery Systems for internal research purposes, but not for any commercial purpose. 2.6 Isis will not have any obligations to Gilead relating to Codeblocker Compounds or this Agreement to the extent arising prior to the Effective Date. - ---------------------- [***] = CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.REQUESTED 2.7 Each party hereby agrees to execute such documents and to take such other actions as shall be necessary or appropriate to effectuate the assignments and licenses set forth in this Section 2.

Assignments and Licenses. 2.1 Gilead hereby sells and assigns to Isis all of Gilead's right, title and interest in Patent Rights, subject to the rights of Glaxo Wellcome Inc. ("Glaxo") under the Collaborative Research Agreement between Glaxo and Gilead dated March 25, 1996 (the "Glaxo Agreement"), provided however, that the assignment of U.S. Patent Number 5,256,775 shall be subject to the condition precedent that Gilead settle the interference involving this patent on conditions of Gilead's choosing (including conceding priority). Gilead hereby grants Isis an exclusive, royalty-free, worldwide, assignable license (with the right to grant sublicenses) to U.S. Patent Number 5,256,775 beginning on the Effective Date and continuing until such time that Gilead settles the interference and the assignment to Isis becomes effective. 2.2 Gilead hereby assigns and delegates to Isis (and Isis accepts and agrees to perform) all of Gilead's rights and obligations under the License Agreement between Xxxx Research Glen Xxxearch Corporation ("Xxxx ResearchGlen Xxxearch") and Gilead dated January 1, 1994 and amended on November 19, 1996. A copy of the written consent to such assignment and delegation signed by Xxxx Research Glen Xxxearch is attached hereto as Exhibit B. In the event that Isis, by reason of this Agreement, is required to indemnify Xxxx Research Glen Xxxearch under Section 8.1 (b) of the Xxxx Research Glen Xxxearch License Agreement, Gilead will indemnify Isis up to a maximum amount equal to one hundred percent (100%) of total royalties received by Gilead from Xxxx ResearchGlen Xxxearch; thereafter, Gilead will not have any indemnity obligations to Isis related to such Agreement. Gilead will continue to honor its obligations to Xxxx Research Glen Xxxearch for activities preceding the Effective Date of this Agreement. 2.3 Subject to the rights of Xxxx Research Glen Xxxearch above, Isis hereby grants to Gilead an exclusive, perpetual, irrevocable, royalty-free, worldwide, assignable license (with the right to grant sublicenses) to directly or indirectly make, have made, use, import, export or sell compounds and other subject matter falling within the scope of Patent Rights which are [***[ * ]. 2.4 Gilead hereby grants to Isis a nonexclusive, perpetual, royalty-free, worldwide, assignable license (with the right to grant sublicenses) to compounds and other subject matter which are within the scope of Patent Rights, solely for use as intermediates in the manufacture of Codeblocker Compounds or oligomers [***[ * ]. 2.5 Isis hereby grants to Gilead a non-exclusive, non-sublicensable, non-assignable, perpetual, irrevocable, royalty-free, worldwide license under Patent Rights to make and use Codeblocker Compounds and Oligonucleotide Delivery Systems for internal research purposes, but not for any commercial purpose. 2.6 Isis will not have any obligations to Gilead relating to Codeblocker Compounds or this Agreement to the extent arising prior to the Effective Date. - ---------------------- [***] = CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.REQUESTED 2.7 Each party hereby agrees to execute such documents and to take such other actions as shall be necessary or appropriate to effectuate the assignments and licenses set forth in this Section 2.