Common use of BACKGROUND AND RECITALS Clause in Contracts

BACKGROUND AND RECITALS. A-1. As set forth herein, all the Parties have certain interests in the patents and patent applications defined and set forth in Exhibit A (the “Patent Applications”), including technologies and/or products described or claimed in the Patent Applications (the “Inventions”), whether as inventor(s) and/or co-inventor(s), assignee(s), and/or licensees. A-2. Xxxxxxxxxxx has certain rights in the Patent Applications as an inventor and/or co-inventor xxxxxxx and has not assigned her rights in the Patent Applications to any entity or institution, such rights being referred to herein as “Xxxxxxxxxxx’x Rights.” Xxxxxxxxxxx has delegated her rights with respect to the development, management and enforcement of the Patent Applications (individually and collectively “Invention Management Rights”) to CRISPR and ERS. In particular, Xxxxxxxxxxx has delegated to CRISPR Invention Management Rights (including without limitation her rights of invention management under this Agreement as well as certain corresponding obligations including without limitation the duty to pay costs and fees associated with the Patent Applications and related proceedings), except for certain Patent Applications for which ERS has been delegated Invention Management Rights by Xxxxxxxxxxx (“ERS Patent Delegation” and “ERS-Delegated Patent Applications,” each as described in Exhibit B). Each of CRISPR and ERS is referred to herein as a “Xxxxxxxxxxx Delegee” and collectively as the “Xxxxxxxxxxx Delegees.” (For clarity, Xxxxxxxxxxx has not delegated to TRACR any Invention Management Rights and TRACR is not a Xxxxxxxxxxx Delegee.) A-3. Xxxxxxxxxxx has exclusively licensed her commercialization rights in the Patent Applications, including her rights to commercialize products and methods described and/or claimed in the Patent Applications, to CRISPR, ERS and TRACR (pursuant to the “CRISPR License,” the “ERS License” and the “TRACR License”), each of CRISPR, ERS and TRACR being individually and collectively the “Xxxxxxxxxxx Licensee(s)” and each of the CRISPR License, the ERS License and the TRACR License, being individually and collectively the “Xxxxxxxxxxx License(s),” each Xxxxxxxxxxx License being subject to Xxxxxxxxxxx’x retained non-transferable right, without the right for Xxxxxxxxxxx to license or sublicense, for her to use the Inventions for her own research purposes and in her own non-commercial research collaborations to which she is party. A-4. Regents has certain rights in the Patent Applications as a co-owner by virtue of assignments (the “Assignments to Regents”) of any and all rights, title and interests of the following inventors and/or co-inventors in the Patent Applications (either directly, or through the Xxxxxx Xxxxxx Medical Institute (“HHMI”) in the case of certain rights of Xxxxxxxx Xxxxxx, Xxxxxx Xxxxx and Xxxxxxx Xxx): Xxxxxxxx Xxxxxx, Xxxxxx Xxxxx, Xxxxx X. Xxxxxx Xxxx, Xxxxxxx Xxx and/or Xxx X. Xx (the “Regents Assignors”), such rights being referred to herein as “Regents’ Rights.” A-5. Vienna has certain rights in the Patent Applications as a co-owner by virtue of an assignment (the “Assignment to Vienna”) of any and all rights, title and interest of inventor and/or co-inventor Xxxxxxxxx Xxxxxxxxx in the Patent Applications (the “Vienna Assignor”), such rights being referred to herein as “Vienna’s Rights.” A-6. Regents’ Rights are subject to obligations to HHMI, and any license or sublicense to the Regents’ Rights is subject to obligations to HHMI, including HHMI’s paid-up, non-exclusive, irrevocable license to use the Inventions for research purposes (“HHMI’s Retained Rights”), Regents’ Rights also are subject to the U.S. Government rights, as described in 35 U.S.C. §§ 200-212, and Regents’ Rights and Vienna’s Rights are subject to a retained right to practice the Inventions on their own behalf and allow other educational and non-profit institutions to use the Inventions for research and educational purposes. A-7. Regents represents its own interests with respect to Invention Management Rights in the Patent Applications, and Regents has also been authorized by Vienna (under an “Inter-Institutional Agreement,” attached hereto as Exhibit D) to take the lead in management of patent prosecution and licensing with respect to the Patent Applications on behalf of Vienna, and such Inter-Institutional Agreement is not affected by provisions of this Agreement. A-8. Regents and Vienna have exclusively licensed their commercialization rights in the Patent Applications pursuant to an agreement with Caribou (the “Caribou License”), and Caribou has granted a sublicense of certain of its rights in a defined field of human therapeutics to Intellia (the “Intellia Sublicense”), the Caribou License and the Intellia Sublicense being individually and collectively the “Regents License(s),” and Caribou and Intellia being individually and collectively the “Regents Licensee(s).” Regents Licenses are not affected by any provision of this Agreement and, in the exercise of rights and performance of obligations under this Agreement, Regents and Regents Licensees shall comply with all obligations in Regents Licenses. A-9. Additionally, Xxxxxxx, Intellia and the Xxxxxxxxxxx Licensees have granted sublicenses to the Patent Applications to other third parties, who are not parties to this Agreement. A-10. Xxxxxxxxxxx, Regents and Vienna are individually referred to as a “Co-Owner” and collectively as the “Co-Owners.” Xxxxxxxxxxx’x Rights, Regents’ Rights, and Vienna’s Rights are collectively referred to as the “Patent Rights.” Each of Regents and CRISPR, or any of their authorized representatives, is sometimes individually referred to herein as an “Invention Manager” and collectively referred to herein as the “Invention Managers”; provided, however, that ERS shall be the Invention Manager in the stead of CRISPR with respect to ERS-Delegated Patent Applications and, in the case of ERS-Delegated Patent Applications, shall be deemed to be an Invention Manager together with Regents in connection with the procedures set forth under Section C-1.3(b) and mediation or arbitration under Section D-1.2. Each of CRISPR, ERS, TRACR, Caribou and Intellia is sometimes individually referred to herein as a “Licensee” and multiply or collectively referred to herein as “Licensees,” and their licenses (i.e. the Xxxxxxxxxxx Licenses and the Regents Licenses) are sometimes individually, multiply or collectively referred to herein as “License(s).”

BACKGROUND AND RECITALS. A-1. As set forth herein, all the Parties have certain interests in the patents and patent applications defined and set forth in Exhibit A (the “Patent Applications”), including technologies and/or products described or claimed in the Patent Applications (the “Inventions”), whether as inventor(s) and/or co-inventor(s), assignee(s), and/or licensees. A-2. Xxxxxxxxxxx has certain rights in the Patent Applications as an inventor and/or co-inventor xxxxxxx thereof and has not assigned her rights in the Patent Applications to any entity or institution, such rights being referred to herein as “Xxxxxxxxxxx’x Rights.” Xxxxxxxxxxx has delegated her rights with respect to the development, management and enforcement of the Patent Applications (individually and collectively “Invention Management Rights”) to CRISPR and ERS. In particular, Xxxxxxxxxxx has delegated to CRISPR Invention Management Rights (including without limitation her rights of invention management under this Agreement as well as certain corresponding obligations including without limitation the duty to pay costs and fees associated with the Patent Applications and related proceedings), except for certain Patent Applications for which ERS has been delegated Invention Management Rights by Xxxxxxxxxxx (“ERS Patent Delegation” and “ERS-Delegated Patent Applications,” each as described in Exhibit B). Each of CRISPR and ERS is referred to herein as a “Xxxxxxxxxxx Delegee” and collectively as the “Xxxxxxxxxxx Delegees.” (For clarity, Xxxxxxxxxxx has not delegated to TRACR any Invention Management Rights and TRACR is not a Xxxxxxxxxxx Delegee.) A-3. Xxxxxxxxxxx has exclusively licensed her commercialization rights in the Patent Applications, including her rights to commercialize products and methods described and/or claimed in the Patent Applications, to CRISPR, ERS and TRACR (pursuant to the “CRISPR License,” the “ERS License” and the “TRACR License”), each of CRISPR, ERS and TRACR being individually and collectively the “Xxxxxxxxxxx Licensee(s)” and each of the CRISPR License, the ERS License and the TRACR License, being individually and collectively the “Xxxxxxxxxxx License(s),” each Xxxxxxxxxxx License being subject to Xxxxxxxxxxx’x retained non-transferable right, without the right for Xxxxxxxxxxx to license or sublicense, for her to use the Inventions for her own research purposes and in her own non-commercial research collaborations to which she is party. A-4. Regents has certain rights in the Patent Applications as a co-owner by virtue of assignments (the “Assignments to Regents”) of any and all rights, title and interests of the following inventors and/or co-inventors in the Patent Applications (either directly, or through the Xxxxxx Xxxxxx Medical Institute (“HHMI”) in the case of certain rights of Xxxxxxxx Xxxxxx, Xxxxxx Xxxxx and Xxxxxxx Xxx): Xxxxxxxx Xxxxxx, Xxxxxx Xxxxx, Xxxxx X. Xxxxxx Xxxx, Xxxxxxx Xxx and/or Xxx X. Xx Lei S. Qi (the “Regents Assignors”), such rights being referred to herein as “Regents’ Rights.” A-5. Vienna has certain rights in the Patent Applications as a co-owner by virtue of an assignment (the “Assignment to Vienna”) of any and all rights, title and interest of inventor and/or co-inventor Xxxxxxxxx Xxxxxxxxx in the Patent Applications (the “Vienna Assignor”), such rights being referred to herein as “Vienna’s Rights.” A-6. Regents’ Rights are subject to obligations to HHMI, and any license or sublicense to the Regents’ Rights is subject to obligations to HHMI, including HHMI’s paid-up, non-exclusive, irrevocable license to use the Inventions for research purposes (“HHMI’s Retained Rights”), Regents’ Rights also are subject to the U.S. Government rights, as described in 35 U.S.C. §§ 200-212, and Regents’ Rights and Vienna’s Rights are subject to a retained right to practice the Inventions on their own behalf and allow other educational and non-profit institutions to use the Inventions for research and educational purposes. A-7. Regents represents its own interests with respect to Invention Management Rights in the Patent Applications, and Regents has also been authorized by Vienna (under an “Inter-Institutional Agreement,” attached hereto as Exhibit D) to take the lead in management of patent prosecution and licensing with respect to the Patent Applications on behalf of Vienna, and such Inter-Institutional Agreement is not affected by provisions of this Agreement. A-8. Regents and Vienna have exclusively licensed their commercialization rights in the Patent Applications pursuant to an agreement with Caribou (the “Caribou License”), and Caribou has granted a sublicense of certain of its rights in a defined field of human therapeutics to Intellia (the “Intellia Sublicense”), the Caribou License and the Intellia Sublicense being individually and collectively the “Regents License(s),” and Caribou and Intellia being individually and collectively the “Regents Licensee(s).” Regents Licenses are not affected by any provision of this Agreement and, in the exercise of rights and performance of obligations under this Agreement, Regents and Regents Licensees shall comply with all obligations in Regents Licenses. A-9. Additionally, XxxxxxxCaribou, Intellia and the Xxxxxxxxxxx Licensees have granted sublicenses to the Patent Applications to other third parties, who are not parties to this Agreement. A-10. Xxxxxxxxxxx, Regents and Vienna are individually referred to as a “Co-Owner” and collectively as the “Co-Owners.” Xxxxxxxxxxx’x Rights, Regents’ Rights, and Vienna’s Rights are collectively referred to as the “Patent Rights.” Each of Regents and CRISPR, or any of their authorized representatives, is sometimes individually referred to herein as an “Invention Manager” and collectively referred to herein as the “Invention Managers”; provided, however, that ERS shall be the Invention Manager in the stead of CRISPR with respect to ERS-Delegated Patent Applications and, in the case of ERS-Delegated Patent Applications, shall be deemed to be an Invention Manager together with Regents in connection with the procedures set forth under Section C-1.3(b) and mediation or arbitration under Section D-1.2. Each of CRISPR, ERS, TRACR, Caribou and Intellia is sometimes individually referred to herein as a “Licensee” and multiply or collectively referred to herein as “Licensees,” and their licenses (i.e. the Xxxxxxxxxxx Licenses and the Regents Licenses) are sometimes individually, multiply or collectively referred to herein as “License(s).”